Medicis Pharmaceutical Corp. v. Actavis Mid Atlantic LLC

282 F.R.D. 395, 82 Fed. R. Serv. 3d 526, 2012 WL 1633178, 2012 U.S. Dist. LEXIS 68937
CourtDistrict Court, D. Delaware
DecidedApril 30, 2012
DocketCiv. Action No. 11-409-LPS-CJB
StatusPublished
Cited by9 cases

This text of 282 F.R.D. 395 (Medicis Pharmaceutical Corp. v. Actavis Mid Atlantic LLC) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Medicis Pharmaceutical Corp. v. Actavis Mid Atlantic LLC, 282 F.R.D. 395, 82 Fed. R. Serv. 3d 526, 2012 WL 1633178, 2012 U.S. Dist. LEXIS 68937 (D. Del. 2012).

Opinion

ORDER

CHRISTOPHER J. BURKE, United States Magistrate Judge.

IT IS ORDERED as follows:

A. Background and Procedural History

1. On April 16, 2012, Plaintiffs Medicis Pharmaceutical Corporation and Dow Pharmaceutical Sciences, Inc. (“Medicis”) moved for an order compelling Defendant Actavis Mid Atlantic LLC (“Actavis”) to provide all documents referring or relating to products that include hydroxyethyl cellulose (“HEC”), xanthum gum, and/or a polyacrylic acid polymer (collectively, “the ingredients”), and to supplement its responses to Medicis’ Interrogatory Nos. 6 and 7. (D.I. 76 at 3) On April 17, 2012, Actavis responded to Medicis’ motion, asserting that the minimal relevance of the requested documents was well outweighed by the significant burden that Acta-vis would face in producing them. (D.I. 79)

2. On April 18, 2012, the Court held a teleconference to discuss Medicis’ motion, as well as another pending discovery dispute. (D.I. 93) At the end of the teleconference, the Court ordered Medicis to produce the underlying document requests and interrogatories (and Actavis’ responses thereto) that were related to Medicis’ motion. The Court reserved decision on the motion, in order to provide the parties with additional time to attempt to resolve the dispute. (Id. at 44-45) Medicis produced the relevant documentation on April 19, 2012. (D.I. 83)

3. In accordance with the Court’s directives, the parties continued to meet and confer in an attempt to reach agreement as to Medicis’ requests. On April 26, 2012, the parties informed the Court that these efforts proved unsuccessful. Medicis’ motion is therefore ripe for resolution.

B. Legal Standard

4. The Federal Rules of Civil Procedure generally allow for parties to “obtain discovery regarding any nonprivileged matter that is relevant to any party’s claim or defense.” Fed.R.Civ.P. 26(b)(1). However, a court must also “limit the ... extent of discovery [397]*397otherwise allowed by these rules” if it finds that “the burden or expense of the proposed discovery outweighs its likely benefit.” Fed.R.Civ.P. 26(b)(2)(C).

C. Medicis’ Document Requests

5. In this litigation, Medicis alleges, inter alia, that Actavis’ generic Clindamycin Phosphate/Tretinoin topical gel product (“the ANDA product”) infringes U.S. Patent No. 6,387,383 (“the patent-in-suit”) under the doctrine of equivalents. (D.I. 76 at 1, 3) According to Medicis, this claim will require the Court to resolve whether Actavis’ inclusion of xanthum gum or HEC as an ingredient in the ANDA product is equivalent to the inclusion of a polyacrylic acid polymer (or carbomer) in the composition claimed in the patent-in-suit. (Id.) Medicis asserts that information relating to Actavis’ use of the ingredients in products other than the ANDA product is relevant to Medicis’ claim of infringement under the doctrine of equivalents. (Id.)

6. Actavis represents that it has 1,400 products currently on the market or under development, which include, inter alia, tablets, analgesic liquids, gels, and ointments. (D.I. 79 at 1-2; D.I. 93 at 34-36) It asserts that a significant number of these products contain xanthum gum, HEC, and polyacrylic acid polymers. (Id.) Actavis argues that records regarding any one of such products— “from toothpaste to suppositories”—could fall within the scope of Medicis’ discovery requests, whether or not that product related in any way to the ANDA product. (D.I. 79 at 2) It is not possible to accurately estimate the number of products that Medicis’ request, as currently formulated, would encompass, because Actavis has “no single database that has all of the formulations of all [Acta-vis] products.” (D.I. 93 at 38)

7. Medicis claims that it is improper for Actavis to withhold discovery of products containing xanthum gum, HEC, and/or ear-bomers because “evidence that [Actavis] has substituted or interchanged these ingredients in its other products would demonstrate that they are equivalent in its proposed generic product.” (D.I. 76 at 3) As an initial matter, Medicis cites no evidence that any such substitution has ever occurred, in either the ANDA product or in any other Actavis product.

8. But even assuming that such substitution has occurred, the Court is not persuaded that the theoretical interchangeability of xanthum gum and HEC for carbomers in products such as cough syrup or cosmetics would be of significant relevance to the question of whether those ingredients are interchangeable in a topical gel for the treatment of skin conditions, like the ANDA product. Whether Medicis’ claims in this case are couched in terms of literal or equivalent infringement, the Court’s inquiry as to the appropriateness of discovery must be focused on the specific ANDA product at issue. See, e.g., Abbott Labs. v. TorPharm, Inc., 300 F.3d 1367, 1373 (Fed.Cir.2002) (“Because drug manufacturers are bound by strict statutory provisions to sell only those products that comport with the ANDA’s description of a drug, an ANDA specification ... will control the infringement inquiry.”) (emphasis added); cf. Novartis Pharms. Corp. v. Eon Labs Mfg., Inc., 206 F.R.D. 392, 394 (D.Del. 2002) (denying plaintiffs request for documents relating to defendant’s “consideration of possible alternatives in a business context” to the allegedly infringing products at issue in a patent litigation matter, because such documents related to products other than those at issue in the litigation). In this case, the doctrine of equivalents analysis is not an abstract biochemical examination of the similarities and differences among the ingredients. Instead, that analysis must be grounded in the particular context of the patent-in-suit and the ANDA product. Medicis’ requests are not focused on the ANDA product or similar products, but instead seek a company-wide survey into products that are unrelated to even the field of use of the ANDA product. Moreover, Medicis’ requests fail to reflect that although the ingredients have many uses, in the context of the products-at-issue they are used as “viscosity-increasing agents.” (D.I. 79, ex. 2 at Actavis 0000192)

9. As the foregoing discussion illustrates, Medicis’ current requests are substantially overbroad. The requests would implicate any documents referring or relating to the [398]*398“development, formulation and design” of any product that happens to contain one of the ingredients—regardless of whether the document had anything do with the ingredients or their interchangeability as viscosity-increasing agents. During the Court’s teleconference with the parties, even Medicis’ counsel appeared to acknowledge the over-breadth of such requests. (D.I. 93 at 30-31)

10. Even if the requests were focused solely on documents relating to the ingredients or their interchangeability, the relevance of such documents would be circumscribed for the reasons set forth above.

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Bluebook (online)
282 F.R.D. 395, 82 Fed. R. Serv. 3d 526, 2012 WL 1633178, 2012 U.S. Dist. LEXIS 68937, Counsel Stack Legal Research, https://law.counselstack.com/opinion/medicis-pharmaceutical-corp-v-actavis-mid-atlantic-llc-ded-2012.