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Abbvie Inc. v. Boehringer Ingelheim International Gmbh

United States District Court, D. Delaware

February 8, 2019

ABBVIE INC. and ABBVIE BIOTECHNOLOGY LTD
v.
BOEHRINGER INGELHEIM INTERNATIONAL GMBH, BOEHRINGER INGELHEIM PHARMACEUTICALS, INC., and BOEHRINGER INGELHEIM FREMONT, INC.

          MEMORANDUM CONCERNING MOTION TO ENFORCE (DOC. 233)

          RICHARD A. LLORET U.S. MAGISTRATE JUDGE

         INTRODUCTION

         The defendants (collectively, “Boehringer”) have moved for entry of an Order enforcing my Order of June 4, 2018, which directed the plaintiffs (collectively, “AbbVie”) to respond promptly to Boehringer's Second Set of Requests for Production of Documents and Things, No. 36-37, and 40-43. See Doc. No. 233 (“Pl. Mot.”). AbbVie has opposed the Motion to Enforce, contending that it has complied with the Order. See Doc. No. 242 (“Def. Opp.”).

         Some context is helpful. AbbVie refused to produce documents pertaining to Boehringer's “unclean hands” defense. Boehringer filed a motion to compel. Doc. No. 71. I granted the motion by Order dated June 4, 2018 and directed AbbVie to produce the documents identified by Boehringer's requests for production (“RFP”) 36-37, 40-43. Doc. No. 112. AbbVie produced some documents in response to my Order, but Boehringer identified a number of deficiencies. Doc. No. 233-1, at 5-7 (Boehringer's deficiency letter of August 17, 2018). These are the deficiency categories Boehringer identified:

• AbbVie's patenting program designed to mitigate biosimilar entry;

• Incentives employed by AbbVie to increase the patent coverage for Humira®, including, but not limited to, the Humira® Idea Submission Program purportedly launched in December 2010 and referenced at ABV-BI00658341;

• Strategies underlying the document titled "Humira IP Discussion" dated January 25, 2011 and carrying Bates numbers ABV-BI00658329-47;

• Strategies to mitigate biosimilar competition involving at least George Avgerinos, Andy Brookes, William Chase, Azita Gerhardt, Richard Gonzalez, John Landgraf, Li-Hong Malmberg, Peter Moesta, Perry Siatis, and Glenn Warner;

• Brainstorm meetings concerning the mitigation of biosimilar competition, including, but not limited to, the meeting held October 4-5, 2010 in Worcester and sponsored by John Landgraf and Peter Moesta;

• Strategies underlying Chairman and Chief Executive Officer Richard Gonzalez's statements in the presentation titled "Abb Vie Long-Term Strategy" dated October 30, 2015, concerning AbbVie's "Broad U.S. Humira Patent Estate";

• Strategies underlying Chairman and Chief Executive Officer Richard Gonzalez's statements during AbbVie's 2015 third quarter earnings call on October 30, 2015 that AbbVie's patent portfolio will "cover not only our commercial formulation but also other related information that biosimilar companies might employ";

• Strategies underlying Chief Financial Officer William Chase's statements on June 11, 2014 at the Goldman Sachs Healthcare Conference that AbbVie's intellectual property strategy "is designed to make it more difficult for a biosimilar to follow behind you and come up with a very, very similar biosimilar" because the "less similar, the greater likelihood of a difference in efficacy; or, very importantly, a difference in safety";

• Strategies underlying Chief Financial Officer William Chase's statements on June 13, 2017 at the Goldman Sachs Global Healthcare Conference that even if Amgen had "prevail[ed] and knock[ed] down every claim" of the 61 patents at-issue, then the market would recognize biosimilar competition would not occur prior to 2022;

• Strategies underlying the documents referenced in AbbVie's clawback letters dated May 4 and June 4, 2018;

• Groups, programs, or initiatives within AbbVie created to further biosimilar mitigation efforts;

• AbbVie's consultation with McKinsey & Co. and the Boston Consulting Group to mitigate biosimilar competition;

• Internal meetings and conferences directed to generating patent applications, including those applications directed to existing and common technology platforms;

• Strategies underlying AbbVie's effort to obtain patent protection over product quality-related attributes and processes;

         AbbVie responded to the deficiency letter. Doc. No. 233-1, at 9 (AbbVie's responsive letter of August 30, 2018). Boehringer's motion followed. Doc. No. 233. Beyond this dispute, the parties have been engaged in broad ranging discovery disputes for quite some time, as a scan of the docket will indicate.

         DISCUSSION

         AbbVie makes four arguments:

• AbbVie contends that Boehringer's August 17, 2018 deficiency letter, and its motion to enforce, are attempts to broaden the scope of their requests for documents, after the deadline for serving discovery requests had passed. Def. Opp. at 1.
• AbbVie also argues that documents sought in the deficiency letter and motion “do not relate to Boehringer's unclean hands defense as pled, much less the specific RFPs subject to Beohringer's motion to compel.” Id. at 5.
• AbbVie contends that Boehringer's deficiency letter and motion are attempts to require “additional custodial searches despite the Court's denial of previous such attempts, [and] apply new search terms in contravention of the District of Delaware Default Standard . . .” Id. at 1; see Id. at 4-7.
• Finally, AbbVie points out that it has produced many documents in compliance with the June 4, 2018 Order, and argues that it has complied with the Order of June 4, 2018. Id. at 2. I will address AbbVie's arguments one at a time, in the order I have mentioned them.

         1. The deficiency categories are within the scope of the requests.

         Boehringer makes a showing that the litany of documents identified in its deficiency letter of August 17, 2018 all fall within the scope of their Requests No. 36-37, and 40-43, to which the June 4, 2018 Order required AbbVie to respond promptly. See “Appendix A” to Pl. Mot., at 1-6 (Doc. No. 233-2). Appendix A is a chart that compares the classes of unproduced documents identified in the letter of August 17, 2018 with the six document requests that were the subject of the June 4, 2018 Order.

         AbbVie argues that Boehringer's showing is insufficient. Def. Opp. at 3-4. As an example, AbbVie explains that Boehringer claims that its deficiency category of documents “relating to ‘AbbVie's patenting program designed to mitigate biosimilar entry' is relevant to ‘marketing and promotion by AbbVie of any formulation containing . . . Humira®' (RFP No. 36).”Id. at 4. AbbVie contends that there is “no tie between AbbVie's marketing of HUMIRA® and any alleged patenting program designed to mitigate biosimilar entry.” Id. AbbVie concludes that the “Court ...


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