United States:
Settling The Discoverability Of Settlement Agreements
23 August 2017
McDermott Will & Emery
To print this article, all you need is to be registered or login on Mondaq.com.
Settlement agreement between a
co-defendant and plaintiff in a Hatch-Waxman patent litigation
matter is discoverable, ruled Judge Bryson in Allergan, Inc. v.
Teva Pharmaceuticals, Inc. et al., Case No. 15-1455 (E.D.
Tex., Jan. 12, 2017) (Bryson, J.).
Plaintiff Allergan sued three generic
drug manufacturers Apotex, Mylan and Teva. Apotex settled and Mylan
sought a copy of the settlement agreement between Allergan and
Apotex. Allergan ultimately agreed to produce the settlement
agreement but with the caveat that Mylan's outside counsel with
access to the settlement agreement should not be involved in any
settlement negotiations with Allergan. Mylan did not agree.
The court first evaluated whether the
agreement was relevant. It acknowledged that settlement agreements
are often regarded as relevant for damages, which is typically not
an issue in Hatch-Waxman cases, but nonetheless found it minimally
relevant to commercial success, one of the secondary considerations
of non-obviousness. Allergan argued that the agreement was not
relevant because it did not intend to rely on the agreement to show
commercial success. The court rejected Allergan's argument
noting that Allergan did not say that it would not argue commercial
success, but only that it did not intend to rely on the settlement
agreement.
Having found the settlement agreement relevant, the court also
rejected Allergan's requested restrictions on access to the
agreement, explaining that Allergan had not demonstrated the
exceptional need for such a restriction. The court concluded that
no further bar to discovery existed: "federal settlement
privilege" did not apply to the case at bar; policy
considerations, such as reluctance of parties to settle if the
agreement were discoverable, were not sufficiently persuasive; and
confidentiality clause in the agreement imposed no limit to
discovery if the court were to order its production. Finding no
reason to foreclose relevant discovery, the court ordered Allergan
to produce the settlement agreement without the additional
restrictions requested by Allergan.
ANDA Update
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
POPULAR ARTICLES ON: Intellectual Property from United States
Are Your NDAs Up To Date?
Wolf, Greenfield & Sacks, P.C.
Nondisclosure agreements (NDAs) can be used to protect companies' confi dential and trade secret information. But you should resist the urge to have a vendor...
Legal Implications Of New York Times vs. OpenAI
BoyarMiller
The New York Times recently filed a landmark lawsuit against OpenAI and Microsoft, accusing them of copyright infringement in the training of the chatbot ChatGPT which launched just over a year ago.