Bayer irks High Court judge over £130k costs in refusing to produce document
Judge says Bayer racked up high costs ‘in pursuit of vague point of principle’ | Teva and others wanted presentation slides as part of patent invalidity suit.
A UK High Court judge has taken aim at Bayer for failing to act “sensibly and proportionately” by refusing to produce presentation slides requested by Teva and other generic manufacturers as part of a patent litigation suit.
Yesterday (December 8) in the Patents Court of the England and Wales High Court, Judge Anthony Mann ordered the German drugmaker to disclose the document, a win for Teva and other claimants in the case including Sandoz, Cipla and Accord Healthcare.
Teva et al had requested disclosure of the document—some presentation slides from a 2004 scientific conference in the US—as part of a lawsuit to challenge a Bayer patent, EP UK 1845961B.
The patent, which has a priority date of January 31, 2005, relates to Bayer’s blockbuster anticoagulant drug Xarelto (rivaroxaban) and claims a particular dosage regime. The chemical compound in the drug was disclosed in an earlier patent in 2001, which did not cover a dosage regime.
Judge Mann took issue with Bayer’s refusal to produce the slides, writing that nothing in Bayer’s response “can be characterised as even vaguely sensible in the context of the modern co-operative conduct of litigation”.
He pointed to the £39,000 that Bayer had spent by way of costs in resisting the application to produce the material, and in a post-script to the judgment cited the costs of the various claimants totalling over £92,000.
“The aggregate costs of this application about the production of one easily producible document were therefore over £130,000,” he wrote.
These costs would not have been incurred “if this matter had been approached sensibly and proportionately”, he concluded.
‘Potential probative effect’
One of the grounds on which Teva and the other claimants sought revocation of the ‘961 patent was obviousness over prior art.
Teva requested the slides from a presentation given by a Bayer scientist at the 2004 conference entitled Discovery of the novel antithrombotic agent BAY 59-7939, an orally active Direct Factor Xa inhibitor.
According to the judgment, Bayer accepted that at the conference, the scientist identified the BAY 59-7939 chemical compound as being the Bayer compound previously disclosed in 2001 patent, and now, but not then, known as rivaroxaban.
“The reason that Teva seeks the presentation documents is because it says they are capable of going to just how confidentially Bayer was then treating the identity of BAY 59-7939,” Judge Mann wrote.
Ordering the disclosure of the documents, Judge Mann wrote that they had a “potential probative effect” and that if anything, the non-production of them would stand in the way of proceedings.
The application for disclosure was necessary “with all its attendant costs and use of court resources, by the decision of Bayer not to produce an apparently existing single, straightforward, non-confidential, probably easily producible and inevitably short document, and instead spend large sums of money in pursuit of some vague point of principle”, he said.
Judge Mann ordered that his award of indemnity costs against Bayer, which included all the claimants’ costs, be assessed by a costs judge because he was concerned that there might be elements of duplication or other factors which meant they might not be “recoverable as one might otherwise expect”.
A trial has been fixed for January next year. The case is Teva Pharmaceuticals et al v Bayer Intellectual Property.
Bristows acted for Teva; Pinsent Masons for Sandoz & Accord; Taylor Wessing for Viatris; Penningtons Manches Cooper for Cipla; HGF Law for Amarox; Pinsent Masons for STADA.
Allen & Overy acted for Bayer.
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