Misc. No. M12–160
United States District Court, S.D. New York
March 09, 2009
MEMORANDUM AND ORDER
*1 Pfizer Inc. (“Pfizer”) moves this Court to exercise its discretionary power to vacate the grant of Apotex Inc.'s (“Apotex”) discovery application under 28 U.S.C. § 1782 and to quash the resulting subpoena Apotex served on November 24, 2008. For the reasons that follow, Pfizer's motion is GRANTED.
Apotex is a defendant in a Canadian patent infringement action involving Apotex's attempt to market a generic version of an ACE inhibitor drug known as ramipril. Sanofi–Aventis Canada Inc. et al. v. Apotex Inc.,
No. T–161–07 (the “Canadian action”). Ramipril is used in the treatment of blood pressure disorders and is alleged to be claimed in Canadian patent No. 1,341,206 (the “′206 patent”). Plaintiffs in the Canadian action are the purported licensee and owner of the ′206 patent. Pfizer is a non-party in the action, which is scheduled for trial beginning in two weeks.
On November 13, 2008, Apotex applied to this Court for an order to obtain discovery for use in the Canadian litigation pursuant to 28 U.S.C. § 1782(a). Apotex's since narrowed subpoena seeks information concerning the alleged activities of four retired employees of non-party Warner–Lambert Company (“Warner–Lambert”), a company that Pfizer acquired in June 2000. According to Apotex, the alleged activities occurred nearly thirty years ago and may be relevant to the inventorship and anticipation defenses that Apotex has asserted in the Canadian patent litigation. Apotex seeks the following documents from Pfizer:
1. Lab notebooks, notes, memoranda, reports, test results and other such writings from May 1, 1980 to October 31, 1981
relating to the development of the compounds disclosed or claimed in Canadian Patent No. 1,341,206.
2. Lab notebooks, notes, memoranda, reports, test results and other such writings from May 1, 1980 to October 31, 1981
relating to the development of the compounds disclosed or claimed in United States Patent No. 4,425,355.
3. Lab notebooks, notes, memoranda, reports, test results and other such writings from May 1, 1980 to October 31, 1981
relating to the development of the compounds disclosed or claimed in EP Patent No. 37,231.
4. Documents and things for the period from May 1, 1980 to October 31, 1981
including all petitions, applications, continuations, divisions, amendments, requests for reexamination, and other filings, relating to:
a. Canadian Patent No. 1,205,476 (“the ′476 Patent”);
b. Canadian Patent No. 372,381, which ultimately led to the issuance of the ′ 476 Patent once the division referenced immediately below was carried out;
c. Canadian Patent Application No. XXX,X97, which was divided out of the Canadian Application No. 372, 381 and upon which conflict proceedings were declared by the Canadian Commissioner of Patents, including any materials that relate to the preparation, prosecution and presentation of any such filings, all of the foregoing, from the date of the commencement of such preparations to present.
*2 5. Lab notebooks, notes, memoranda, reports, test results and other such writings from May 1, 1980 to October 31, 1981
relating to the first synthesis of an enalapril analog/derivative compound bearing a (2–carboxy–or 2–carboalkyoxy–) perhydroindole moiety in place of the C-terminal proline ring.
6. Lab notebooks, notes, memoranda, reports, test results and other such writings from May 1, 1980 to October 31, 1981
relating to the first synthesis of an enalapril analog/derivative compound bearing a (2–carboxy– or 2–carboalkoxy) perhydrocyclopenta [b]pyrrole in place of the C-terminal proline ring.
This Court approved Apotex's 28 U.S.C. § 1782(a) application on November 21, 2008. Apotex served the subpoena to respondent on November 24, 2008, setting forth December 10 and 17, 2008 as the respective dates for compliance with document requests and deposition. On December 8, 2008, Pfizer timely served objections to Apotex's subpoena.
Pursuant to 28 U.S.C. § 1782, a district court is authorized to assist a foreign or international tribunal or a litigant before such tribunal by ordering discovery where (1) the person from whom discovery is sought resides or is found in the district; (2) the discovery is for use in a proceeding before a foreign tribunal; and (3) the application is made by a foreign or international tribunal or “any interested person.” Schmitz v. Bernstein, Liebhard & Lifshitz, LLP, 376 F.3d 79, 83 (2d Cir.2004) (internal quotation marks omitted).
Even if the statutory requirements are met, however, a district court is granted “wide discretion to determine whether to grant discovery and equally wide discretion to tailor such discovery to avoid attendant problems.” Esses v. Hanania, 101 F.3d 873, 876 (2d Cir.1996). The Supreme Court has articulated four factors to assist district courts in determining whether to grant § 1782 applications: (1) whether the documents or testimony sought are within the foreign tribunal's jurisdictional reach and thus accessible absent § 1782 aid; (2) the nature of the foreign tribunal, the character of the proceedings underway abroad, and the receptivity of the foreign government or the court or agency abroad to U.S. federal-court judicial assistance; (3) whether the § 1782 request conceals an attempt to circumvent foreign proof-gathering restrictions or other policies of a foreign country or the United States; and (4) whether the subpoena contains unduly intrusive or burdensome requests. Intel Corp. v. Advanced Micro Devices, Inc., 542 U.S. 241, 264–65, 124 S.Ct. 2466, 159 L.Ed.2d 355 (2004). Moreover, “district courts must exercise their discretion under § 1782 in light of the twin aims of the statute: ‘providing efficient means of assistance to participants in international litigation in our federal courts and encouraging foreign countries by example to provide similar means of assistance to our courts.’ “ Schmitz, 376 F.3d at 84 (internal quotation marks and citation omitted).
*3 Bearing these principles in mind, the Court also notes that Federal Rule of Civil Procedure 26 allows the Court to limit the scope of discovery. In re Application of Malev Hungarian Airlines, 964 F.2d 97, 102 (2d Cir.1992). In this regard, “if the district court determines that a party's discovery application under section 1782 is made in bad faith, for the purpose of harassment, or unreasonably seeks cumulative or irrelevant materials, the court is free to deny the application in toto, just as it can if discovery was sought in bad faith in domestic litigation.” Euromepa S.A. v. R. Esmerian, Inc., 51 F.3d 1095, 1101 n. 6 (2d Cir.1995); see also
In re an Order Permitting Metallgesellschaft AG to Take Discovery, 121 F.3d 77, 79 (2d Cir.1997) (noting that if a court “suspects that the [§ 1782 discovery] request is a ‘fishing expedition’ or a vehicle for harassment, the district court should deny the request”) (citation omitted).
The Court concludes that Apotex's requests are unduly intrusive and burdensome. The requested discovery requires Pfizer, a non-party, to devote substantial resources to perform onerous searches and then review voluminous documents for a potentially small subset of Warner–Lambert documents that date back nearly thirty years. Such a search is an arduous task, as Pfizer acquired Warner–Lambert in 2000—twenty years after the alleged anticipating activities. Further, since that time, many of Warner–Lambert's employees have retired and many of Warner–Lambert's plants have been closed. For example, the Ann Arbor, Michigan facility where the Warner–Lambert employees worked before their retirement has since closed.
Moreover, Apotex's first four discovery requests seek all documents and writings relating to any compound disclosed or claimed in a number of United States and foreign patents and patent applications. To respond to this request, Pfizer would have to devote substantial time and effort to the legal analysis of the Canadian ′206 patent to determine which compounds are actually disclosed and claimed before Pfizer can perform any meaningful search for documents. Pfizer would also need to legally analyze the Warner–Lambert patents to determine which compounds are actually disclosed and claimed within those respective patents. Such legal analyses would go well beyond a superficial review of the patents and applications themselves.
Similarly, Apotex's fifth and sixth discovery requests call for a search for documents relating to the “first synthesis” of a derivative compound or analog of a particular structure. To respond to this request, Pfizer would be required to identify the derivatives and analogs to the extent that they exist. Pfizer contends that this effort would necessarily involve legal counsel as well as technical consultants. Pfizer would also need to locate and assemble a forum of individuals employed at Warner Lambert during the 1980–1981 time period, who are familiar with such research to the extent that it was undertaken.
*4 Although Apotex argues that Pfizer's electronic databases concerning Warner–Lambert documents are easily searchable, Pfizer refutes this assertion. Pfizer contends that its databases do not allow for easy searching of compounds that it never commercially marketed or developed, and the databases maintained by Pfizer are not organized in such a way that allows searching for compounds that may be similar to other compounds. It would therefore be a vast enterprise to search for, locate, and review materials in so far as they can be found for relevance to Apotex's discovery requests. In addition, as Apotex seeks documents of a confidential and highly sensitive nature, Pfizer would, in all likelihood, have to expend substantial resources to determine applicable privileges and create a privilege log.
Finally, the Court notes Pfizer's argument that the application for discovery concerns an anticipation theory that is unavailable under Canadian patent law and therefore not relevant or useful to the Canadian court. Because the Court is persuaded that the requests are unduly intrusive and burdensome, the Court need not decide whether Canadian law allows the anticipation defense that Apotex has proposed. Although there is some support for Pfizer's position that where, as here, a conflict proceeding has been directed and a patent granted, an anticipation defense is not available, see Laboratoires Servier v. Apotex Inc.,
 2008 F.C. 825 at 381–456 (Can.), the validity of this position and the application to the present circumstances is for the Canadian court, not this Court, to decide.
For the reasons set forth above, the Court GRANTS Pfizer's motion, vacates the grant of Apotex's discovery application under 28 U.S.C. § 1782, and quashes the resulting subpoena Apotex served on November 24, 2008.
The Court notes that both the lateness and the breadth of this discovery request raise the additional concern that this § 1782 application may be a fishing expedition targeting the acquisition of a competitor's proprietary information.
End of Document.