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Roxane Laboratories, Inc. v. Abbott Laboratories

United States District Court, Sixth Circuit

September 3, 2013

ROXANE LABORATORIES, INC., Plaintiff,
v.
ABBOTT LABORATORIES, et al., Defendants. ABBVIE, INC., Plaintiff,
v.
ROXANE LABORATORIES, INC., Defendant.

OPINION AND ORDER

NORAH McCANN KING, Magistrate Judge.

This matter is before the Court for consideration of plaintiff Roxane Laboratories, Inc.'s Motion to Compel Responses to Interrogatories (" Plaintiff's Motion to Compel "), Doc. No. 115, defendant AbbVie Inc.'s Opposition to Plaintiff's Motion to Compel Responses to Interrogatories (" Defendant's Response "), Doc. No. 123, and plaintiff's reply, Roxane Laboratories, Inc.'s Reply in Further Support of its Motion to Compel Responses to Interrogatories (" Plaintiff's Reply "), Doc. No. 125. For the reasons that follow, Plaintiff's Motion to Compel is DENIED.

I. Background

Defendant AbbVie Inc. ("AbbVie"), is the holder of approved New Drug Application ("NDA") No. 22-417 for ritonavir tablets, 100 mg, which is marketed and sold under the trade name Norvir®. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 58, ¶ 13. AbbVie also holds the regulatory exclusivities associated with that NDA. Id. Plaintiff Roxane Laboratories, Inc. ("Roxane" or "plaintiff") has submitted Abbreviated New Drug Application No. 202573 ("ANDA 202573") to the United States Food and Drug Administration in order "to obtain regulatory approval to engage in the commercial manufacture, use, or sale of generic oral ritonavir tablets, 100 mg, " which are the "bioequivalent" to Norvir®, "before the expiration of the Listed Patents." No. 2:12-cv-312 (S.D. Ohio), Amended Complaint, Doc. No. 56, ¶ 16.

Roxane filed suit in this Court on April 10, 2012 at 4:25 p.m., seeking a declaration of invalidity and non-infringement in connection with Patent Nos. 7, 148, 359 (the "0314359 patent") and 7, 364, 752 (the "0314752 patent") held by defendants Abbott Laboratories ("Abbott") and AbbVie and relating to the drug Norvir®. See id. at ¶¶ 1, 11-13. At 11:51 pm on that same day, Abbott filed suit in the United States District Court for the District of Delaware, alleging that Roxane's ANDA infringed Abbott's 359 patent, 752 patent, and Patent Nos. 5, 648, 497 (the "0314497 patent"), 6, 037, 157 (the "0314157 patent"), and 6, 703, 403 B2 (the "0314403 patent"), all related to the drug Norvir®. 2:13-cv-645 (S.D. Ohio), Complaint, Doc. No. 1, ¶ 3; 2:13-cv-645 (S.D. Ohio), Amended Complaint, Doc. No. 8, ¶ 3. That action was transferred to this Court on June 18, 2013. Id., Order, Doc. No. 65.

A Rule 16 conference was held in the Ohio action on June 20, 2012. No. 2:12-cv-312 (S.D. Ohio), Preliminary Pretrial Order, Doc. No. 29. Noting the pendency of the Delaware action and in an effort to "minimize the risk of duplicate discovery, " the Court ordered "that discovery conducted in either of the pending cases may be utilized, if otherwise appropriate, in the other case." Id. at p. 2.

On July 6, 2012 and September 7, 2012, Roxane propounded two sets of interrogatories in the Ohio action directed to the 0314359 and 0314752 patents, which are referred to in the interrogatories as the "Patentsin-Suit." Plaintiff's Motion to Compel, p. 5, Exhibits 7, 12. Roxane also specified that, should the Delaware action be transferred to the Southern District of Ohio, "the term 0314Patents-in-Suit' shall also include" the 02bd497, 0314157, and 0314403 patents (collectively the "transferred patents"). Id. at Exhibit 7, p. 3 n.1. Roxane also sought extensive discovery in the Ohio action regarding the transferred patents. See Order, Doc. No. 64. On December 19, 2012, the Court conferred with counsel for all parties regarding Roxane's requested discovery relating to the transferred patents and concluded that discovery related to the transferred patents was not relevant to the Ohio action. Id.

The United States District Court for the District of Delaware did not conduct a Rule 16 conference nor did it issue a scheduling order. Nevertheless, on February 14, 2013, the parties accepted that court's jurisdiction for the limited purpose of resolving discovery disputes and they stipulated to the "production of documents and things." No. 2:13-cv-645 (S.D. Ohio), Stipulation Regarding Discovery of Documents and Things, Doc. No. 53. On March 11, 2013, Roxane served interrogatories in the Delaware action related to the transferred patents. Plaintiff's Motion to Compel, Exhibit 14.

On June 18, 2013, AbbVie was substituted as a party for Abbott in the Delaware action, and Roxane's motion to transfer the Delaware action to this Court was granted. No. 2:13-cv-645 (S.D. Ohio), Doc. Nos. 13, 65. At the time, AbbVie had not answered any of Roxane's interrogatories addressing the transferred patents. Defendant's Response, p. 2. On July 3, 2013, AbbVie objected to the interrogatories on the basis that the interrogatories had been improperly served because they were not yet authorized in the transferred action. Id. at Exhibit 10. On July 18, 2013, Roxane filed Plaintiff's Motion to Compel, seeking to compel response to interrogatories relating to the transferred patents and deeming all objections waived pursuant to Fed.R.Civ.P. 33(b)(4). Plaintiff's Motion to Compel, p. 2.

As noted supra, the Delaware action was transferred to this Court on June 18, 2013. On July 23, 2013, the parties' July 9, 2013 joint motion to consolidate the Ohio action and the transferred action was granted. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 120; No. 2:13-cv-645 (S.D. Ohio), Doc. No. 69.

Roxane's contested discovery requests contain both contention and non-contention interrogatories. AbbVie served responses to the noncontention interrogatories on August 2, 2013; AbbVie has not responded to the contention interrogatories. Defendant's Response, p. 2; Plaintiff's Reply, PAGEID 3580; No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124, p. 2. The Court conferred with counsel on August 8, 2013 to establish a revised pretrial schedule for the consolidated case. No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124. After conferring with counsel, the Court ordered, inter alia, that AbbVie respond to Roxane's contention interrogatories no later than September 30, 2013 or by another date set by the Court in resolving Plaintiff's Motion to Compel. Id. at p. 2.

II. Standard

Rule 37 of the Federal Rules of Civil Procedure authorizes a motion to compel discovery when a party fails to provide proper response to requests for production of documents under Rule 34. Fed. R. Civ. Pro. 37(a)(3)(B). "The proponent of a motion to compel discovery bears the initial burden of proving that the information sought is relevant." Martin v. Select Portfolio Serving Holding Corp., No. 1:05-cv-273, 2006 U.S. Dist. LEXIS 68779, at *2 (S.D. Ohio Sept. 25, 2006) (citing Alexander v. Fed. Bureau of Investigation, 186 F.R.D. 154, 159 (D.D.C. 1999)).

Rule 26(b) provides that "[p]arties may obtain discovery regarding any nonprivileged matter that is relevant to any party's claim or defense." Fed.R.Civ.P. 26(b)(1). Relevance for discovery purposes is extremely broad. Lewis v. ACB Bus. Servs., Inc., 135 F.3d 389, 402 (6th Cir. 1998). "The scope of examination permitted under Rule 26(b) is broader than that permitted at trial. The test is whether the line of interrogation is reasonably calculated to lead to the discovery of admissible evidence." Mellon v. Cooper-Jarrett, Inc., 424 F.2d 499, 500-01 (6th Cir. 1970). However, "district courts have discretion to limit the scope of discovery where the information sought is overly broad or would prove unduly burdensome to produce." Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305 (6th Cir. 2007) (citing Fed.R.Civ.P. 26(b)(2)). See also Lewis, 135 F.3d at 402 (determining the proper scope of discovery falls within the broad discretion of the trial court). In determining the proper scope of ...


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