Roxane Laboratories, Inc. v. Abbott Laboratories, 2:12-cv-00312

AbbVie holds NDA No. 22-417 for Norvir® (ritonavir 100 mg); Roxane filed ANDA seeking approval to market a bioequivalent generic before listed-patent expiration.
Roxane sued in S.D. Ohio (Ohio action) seeking declaratory judgment of noninfringement/invalidity as to two patents (ʼ359 and ʼ752); Abbott/AbbVie separately sued in D. Del. alleging infringement of additional patents (ʼ497, ʼ157, ʼ403).
Roxane served interrogatories in the Ohio action (July & Sept. 2012) that anticipated inclusion of the transferred patents if the Delaware case moved; Roxane later served interrogatories in the Delaware action (Mar. 2013).
The Delaware court did not enter a scheduling order or otherwise authorize general interrogatory discovery; parties stipulated only to limited document discovery in Delaware.
The Delaware action was transferred to and consolidated with the Ohio action on July 23, 2013; Roxane filed a motion to compel (July 18, 2013) before consolidation seeking responses to interrogatories directed to the transferred patents and to deem objections waived.
The magistrate judge denied the motion to compel: interrogatories addressing the transferred patents were not authorized prior to consolidation; therefore AbbVie was not required to have timely objected and did not waive objections; AbbVie was ordered to respond to contention interrogatories by September 30, 2013.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Were interrogatories directed to the transferred patents properly served/authorized before consolidation?	Roxane: interrogatories were timely and ripe because Rule 26(f) obligations in Ohio were met and the parties planned consolidation; transfer made the requests relevant.	AbbVie: Delaware action never authorized interrogatories; neither court had authorized discovery pre-consolidation, so those interrogatories were improper.	Not authorized pre-consolidation; interrogatories were improper when propounded, so motion to compel denied on that basis.
Did AbbVie waive objections under Fed. R. Civ. P. 33(b)(4) by not timely objecting?	Roxane: AbbVie’s failure to timely respond/ object waived all objections.	AbbVie: No obligation to object to unauthorized interrogatories; no waiver.	No waiver: because interrogatories were not authorized at time served, AbbVie did not have to timely object; Rule 33(b)(4) waiver does not apply.
Should the court order responses now and set a deadline?	Roxane: sought immediate compelled responses and waiver of objections.	AbbVie: opposed compelling pre-consolidation interrogatories and waiver.	Court denied motion to compel but ordered AbbVie to respond to Roxane’s contention interrogatories by September 30, 2013.

Alexander v. Fed. Bureau of Investigation, 186 F.R.D. 154 (D.D.C. 1999) (party moving to compel must show requested information is relevant)
Lewis v. ACB Bus. Servs., Inc., 135 F.3d 389 (6th Cir. 1998) (discovery relevance is very broad)
Mellon v. Cooper-Jarrett, Inc., 424 F.2d 499 (6th Cir. 1970) (discovery may be broader than trial evidence; test is reasonably calculated to lead to admissible evidence)
Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288 (6th Cir. 2007) (district courts may limit discovery as overly broad or unduly burdensome)
Conti v. Am. Axle & Mfg. Inc., 326 F. App’x 900 (6th Cir. 2009) (courts balance discovery rights against preventing fishing expeditions)
Bush v. Dictaphone Corp., 161 F.3d 363 (6th Cir. 1998) (same; scope of discovery may be limited by district court discretion)