ABRAXIS BIOSCIENCE, LLC v. ACTAVIS LLC
2:16-cv-01925
D.N.J.May 25, 2017Background
- Celgene (Abraxis) sued Actavis under Hatch-Waxman after Actavis filed an ANDA to market a generic version of Abraxane®, which is albumin-bound paclitaxel.
- Celgene alleges infringement of four patents and discovery is ongoing; case is in early stages with discovery scheduled to close June 29, 2017.
- Celgene moved for a letter rogatory to obtain discovery from BioVectra, a Canadian third-party manufacturer that Celgene says holds samples and materials relevant to Actavis’s ANDA product.
- Celgene’s letter rogatory sought seven document categories and three deposition topics focused on manufacturing, stability, comparative testing, and related communications.
- Actavis opposed, arguing the request is overbroad, duplicative, costly, untimely, and that relevant materials should be obtained from Actavis as a party; parties dispute whether Actavis has standing to object to a third-party letter rogatory.
- The Magistrate Judge granted Celgene’s motion, finding relevance, timeliness, proportionality, and that any burden would fall on BioVectra (which submitted no opposition).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether to issue a letter rogatory to obtain discovery from BioVectra in Canada | Needed because BioVectra is the only source of starting materials and related documents/testing; Actavis lacks those materials | Foreign discovery is unnecessary because Actavis can supply relevant materials; request is duplicative and burdensome | Granted: court exercised discretion to issue letter rogatory; BioVectra identified as likely custodian of materials |
| Relevance of requested samples/documents/deposition topics | Samples and documents are directly relevant to composition, manufacturing, stability, and testing of the accused product | Information may be immaterial or inadmissible; duplicative of what defendant could provide | Granted: requests reasonably calculated to lead to admissible evidence and proportional to case needs |
| Timeliness of seeking foreign discovery | Celgene acted promptly after learning BioVectra had the materials; filing occurred within days of confirmation | Celgene delayed in seeking foreign discovery and might disrupt schedule | Granted: court found request timely given ongoing early-stage discovery |
| Standing of Actavis to object to third-party letter rogatory | Actavis lacks standing to object to discovery directed at non-party | Actavis contends it has standing to oppose | Court assumed Actavis had standing for completeness but still found request meritorious and granted it |
Key Cases Cited
- DBMS Consultants Ltd. v. Computer Assoc. Int’l, 131 F.R.D. 367 (D. Mass. 1990) (describes purpose of letters rogatory and cautions courts not to weigh anticipated deposition evidence on issuance)
- Leasco Data Processing Equip. Co. v. Maxwell, 63 F.R.D. 94 (S.D.N.Y. 1973) (recognizes issuance of letters rogatory is within court's discretion)