Opinion
02 Civ. 2255 (SHS).
December 29, 2009
OPINION ORDER
Plaintiffs Sanofi-Synthelabo, Sanofi-Synthelabo, Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership (collectively, "Sanofi") move pursuant to Federal Rules of Civil Procedure 26(c) and 45(c) for an order protecting them from irrelevant and unduly burdensome discovery requests and quashing subpoenas issued by defendants Apotex Inc. and Apotex Corp. (collectively, "Apotex") to nonparties Bristol-Myers Squibb Company and Dr. Andrew Bodnar.
I. Background
On March 21, 2002, Sanofi filed this patent infringement suit against Apotex. The history of this litigation is recounted in the opinion dated August 31, 2006 that granted Sanofi's motion for a preliminary injunction, with which the Court assumes familiarity. See Sanofi-Synthelabo v. Apotex Inc., 488 F. Supp. 2d 317 (S.D.N.Y. 2006). Of particular relevance, this Court found — and the Federal Circuit affirmed — that Sanofi's `265 patent is valid. See Sanofi-Synthelabo v. Apotex Inc., 492 F. Supp. 2d 353 (S.D.N.Y. 2007), aff'd 550 F.3d 1075 (Fed. Cir. 2008).
The parties' Settlement Agreement dated May 26, 2006 provides that
if the litigation results in a judgment that the `265 patent is not invalid or unenforceable, Sanofi agrees that its actual damages for any past infringement by Apotex, up to the date on which Apotex is enjoined, will be 50% of Apotex's net sales of clopidogrel products if Sanofi has not launched an authorized generic and 40% of Apotex's net sales if Sanofi has launched an authorized generic.
(Settlement Agreement dated May 26, 2006 ¶ 14(ii), Ex. 2 to Dec. of David C. Armillei dated Nov. 2, 2009 ("Armillei Dec.").) Apotex contends that — read in its full context, including alleged oral side agreements — this provision sets forth Sanofi's agreement not to launch a generic product or to market Plavix® itself in a manner that would cut into existing sales of Plavix®. ( See Defs.' Mem. in Opposition at 2, 8.) Accordingly, Apotex seeks discovery regarding Sanofi's communication with non-parties regarding the possibility of launching an authorized generic, Sanofi's marketing and pricing of Plavix®, and communications between Sanofi, Bristol-Myers Squibb Company, and Dr. Bodnar. Specifically, Apotex has served Sanofi and third parties with
• a notice of deposition pursuant to Federal Rule of Civil Procedure 30(b)(6) of representatives of Sanofi-Synthelabo, Sanofi-Synthelabo, Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership on topics including plaintiffs' marketing and pricing of Plavix® and expectations regarding its market share in 2006, as well as any plans Sanofi may have formed to launch an authorized generic of the drug ( see Ex. 4 to Armillei Dec.);
• a notice of deposition pursuant to Federal Rule of Civil Procedure 30(b)(1) of Jean-Pierre Kerjouan, Steve Pélissier, and Hugh O'Neill ( see Ex. 5 to Armillei Dec.); and
• subpoenas pursuant to Federal Rules of Civil Procedure 30(b)(6) and 45 to Bristol-Myers Squibb Company and Dr. Andrew Bodnar, including of documents related to the negotiation of settlement agreements in and other communications regarding this action as well as information regarding pricing, discounts, and rebates offered for Plavix® ( see Exs. 6, 7 to Armillei Dec.).
Sanofi contends that the May 2006 Settlement Agreement is clear and unambiguous in limiting damages to 40 percent of Apotex's sales only if Sanofi launched an authorized generic of its brand name drug, Plavix®. Although the May 2006 Settlement Agreement does not define the term "authorized generic," Sanofi proffers definitions found in statutes, regulations, and judicial opinions to demonstrate that — even if (without conceding) it did engage in the behavior that Apotex alleges — it did not launch an authorized generic and thus Apotex's damages are 50 percent of its net sales of clopidogrel bisulfate.
II. Deposition Notices
The Court gives unambiguous contract terms their plain meaning. See Krumme v. Westpoint Stevens Inc., 238 F.3d 133, 139 (2d Cir. 2000). "Where, as here, the contract's language admits of only one reasonable interpretation, the court need not look to extrinsic evidence of the parties' intent or to rules of construction to ascertain the contract's meaning." Bear, Stearns Co., Inc. v. Bennett, 938 F.2d 31, 32 (2d Cir. 1991). Sanofi is correct that the acts alleged by Apotex do not fall within the plain and unambiguous meaning of the contract that contemplates the "launch of an authorized generic drug."
Federal Rule of Civil Procedure 26(b)(1) limits discovery to "any nonprivileged matter that is relevant to any party's claim or defense." See also Tottenham v. Trans World Gaming Corp., No. 00 Civ. 7697, 2002 WL 1967023 (S.D.N.Y. June 21, 2002) ("Discovery . . . is not intended to be a fishing expedition . . . [and] requests cannot be based on pure speculation or conjecture."). Rule 26(c) states, in pertinent part, that the court "may, for good cause, issue an order to protect a party or person from annoyance, embarrassment, oppression, or undue burden or expense. . . ." Because the notice of Rule 30(b)(6) depositions of plaintiffs' representatives addresses topics that are not relevant to the current damages phase of this litigation and thus pose an undue burden, see Jones v. Hirschfeld, 219 F.R.D. 71, 78 (S.D.N.Y. 2003) (In "the absence of any basis for believing [the proposed deponent] has non-privileged information regarding any relevant matter, [the proposed deponent] has demonstrated that it would constitute an `undue burden' for him to be compelled to testify."), Sanofi's motion for a protective order is granted.
Similarly, while the notice of depositions pursuant to Rule 30(b)(1) does not specify the topics for discovery, Apotex represents in its memorandum that it will use those depositions to seek "information concerning the negotiation and interpretation of the [March and May 2006] Settlement Agreements between Sanofi and Apotex . . . [including] evidence Apotex believes will support its position that Sanofi launched an `authorized generic' pursuant to Paragraph 14(ii) of the May 2006 Settlement Agreement. . . ." (Defs.' Mem. in Opp. at 12.) Again, Apotex does not even contend that Sanofi actually launched an authorized generic. Accordingly, its depositions noticed pursuant to Rule 30(b)(1) are not relevant and Sanofi's motion for a protective order is granted.
For the reasons set forth above, a protective order is granted to Apotex prohibiting the noticed depositions of representatives of plaintiffs Sanofi-Synthelabo, Sanofi-Synthelabo, Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership, as well as those of Jean-Pierre Kerjouan, Steve Pélissier, and Hugh O'Neill.
III. Subpoenas
Federal Rule of Civil Procedure 45(c)(3)(A)(iv) provides that a court must quash or modify a subpoena that "subjects a person to undue burden." "Whether a subpoena imposes an undue burden depends upon such factors as relevance, the need of the party for the documents, the breadth of the document request, the time period covered by it, the particularity with which the documents are described and the burden imposed." Griffith v. U.S., No. M8-85, 2007 WL 1222586, at *2 (S.D.N.Y. April 25, 2007) (quotation and citation omitted); see also Kirschner v. Klemons, No. 99 Civ. 4828, 2005 WL 1214330, at *2 (S.D.N.Y. May 19, 2005) ("A subpoena that pursues material with little apparent or likely relevance to the subject matter . . . is likely to be quashed as unreasonable even where the burden of compliance would not be onerous.").
Apotex's stated purpose in issuing subpoenas to both Bristol-Myers Squibb Company and Dr. Andrew Bodnar is to seek information about Sanofi's communications with third parties about the possibility of launching an authorized generic and about its marketing and pricing of Plavix®. Neither area of discovery is relevant to the damages phase of this litigation. Accordingly, Sanofi's motion to quash the subpoenas is granted.
IV. Conclusion
Apotex seeks information that is irrelevant to the current damages phase of this protracted litigation through the notices of deposition and subpoenas at issue in Sanofi's motion. Accordingly, Sanofi's motion for a protective order and to quash the subpoenas is granted in its entirety.
SO ORDERED: