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Judge Burke Denies Motion to Compel in ANDA Case, Requires That Document Requests be Limited to “Narrow Categories” and Focused on the ANDA Product at Issue

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In Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC, C.A. No. 11-409-LPS-CJB, Judge Burke denied plaintiffs’ motion to compel production of documents on the grounds that the document requests were “substantially overbroad.” Id. at 4. By their motion, plaintiffs sought to compel production of “all documents referring or relating to” defendant’s use of certain ingredients in products other than the ANDA product at issue in the litigation. Id. at 1. Plaintiffs argued that the documents were relevant to their claim of infringement under the doctrine of equivalents. Id. at 2-3. Specifically, plaintiffs argued that the documents and underlying ingredient information they were seeking was discoverable, in part, because “evidence that [defendant] has substituted or interchanged these ingredients in its other products would demonstrate that [the ingredients] are equivalent in its proposed generic product.” Id. at 3. Defendant countered, arguing that plaintiffs’ requests were overbroad and, thus, improper under the rules. Defendant noted that, for example, any one of its more than 1,400 products could fall within the scope of plaintiffs’ requests, “whether or not that product related in any way to the ANDA product.” Id. at 3. The Court agreed, concluding that plaintiffs’ requests were, indeed, “substantially overbroad” and “not focused on the ANDA product or similar products” at issue in the case. Id. at 4. In its analysis, the Court noted that the document requests, as written, implicated “any product that happens to contain one of the ingredients.” Id. at 4. The Court also commented on the “limited relevance” of any such documents in comparison to the burden and expense associated with defendant having to conduct such an “open-ended search.” Id. at 5. In its ruling, the Court ordered that the document requests be “limited to certain narrow categories of [defendant’s] products” that are more closely related to the ANDA product at issue. Id. at 5-6.


Medicis Pharmaceutical Corp., et al. v. Actavis Mid Atlantic LLC

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