Sandoz AG & Others vs Bayer Intellectual Property GmbH

This case involved an application by Teva, one of several claimants, against Bayer for the production of presentation slides used at a 2004 American Chemical Society conference, which were relevant to a patent revocation case.

TLDR:

• Teva, among other claimants, sought the disclosure of presentation slides from Bayer.
• The slides were used in a 2004 conference and were relevant to a patent revocation case.
• The court ordered Bayer to disclose the slides, criticizing Bayer's resistance to the application.

The claimants, including Sandoz AG, Teva, Cipla, Amarox, Generics (UK), and STADA, challenged a patent held by Bayer Intellectual Property GmbH. The patent in question related to the drug rivaroxaban, known for its antithrombotic properties. The dispute centered on the production of presentation slides used by Bayer at an American Chemical Society (ACS) conference in 2004, which Teva argued were relevant to their case on the obviousness of the patent.

The presentation, given by a Bayer scientist, allegedly disclosed the chemical structure of the compound BAY 59-7939, which later became known as rivaroxaban. Teva contended that the slides would demonstrate Bayer's stance on confidentiality and the likelihood of Bayer disclosing the compound's structure upon inquiry. Bayer resisted the application, arguing that the slides were not probative and irrelevant to the case.

The court, presided over by Sir Anthony Mann, found that the slides were indeed relevant to the issues at hand. The judge noted that the slides could potentially show how Bayer treated the confidentiality of the compound's identity and whether Bayer would have disclosed this information if asked. The court criticized Bayer's resistance to the application, highlighting the unnecessary costs incurred by both parties.

The court ordered Bayer to disclose the presentation slides, emphasizing the importance of cooperation in litigation. The judge expressed disappointment in Bayer's approach, which he deemed contrary to the modern cooperative conduct of litigation. The court also awarded indemnity costs to the claimants, reflecting the unnecessary expenses caused by Bayer's resistance.

This case underscores the significance of disclosure in patent litigation and the court's willingness to ensure that relevant documents are produced to facilitate a fair trial. It also highlights the potential consequences of resisting reasonable disclosure requests, including the imposition of costs.

The decision in this case is particularly relevant for practitioners involved in patent litigation, especially those dealing with issues of obviousness and confidentiality. It serves as a reminder of the importance of transparency and cooperation in the litigation process.

The court's ruling provides valuable insights into the handling of disclosure applications and the factors considered in determining the relevance and necessity of documents. It also illustrates the potential pitfalls of adopting an overly rigid stance on disclosure, which can lead to significant financial and procedural consequences.

Legal representatives: Ms. Anna Edwards-Stuart and Mr. Adam Gamsa (instructed by Bristows LLP for Teva; Pinsent Masons LLP for Sandoz & Accord; Taylor Wessing LLP for Viatris; Penningtons Manches Cooper LLP for Cipla; HGF Law LLP for Amarox; Pinsent Masons LLP for STADA; Bristows LLP) for the Claimant. Ms. Alice Hart (instructed by Allen & Overy LLP) for the Defendants.

Judicial Panel: Sir Anthony Mann

Case Citation Reference: [2023] EWHC 3276 (Pat)