Federal Circuit dismisses Amgen’s appeal and mandamus petition

Amgen v. Hospira (epoetin alfa)

Today, the Federal Circuit dismissed Amgen’s appeal from and mandamus petition regarding the U.S. District Court for the Delaware’s order denying Amgen’s motion to compel discovery for lack of jurisdiction under the collateral order doctrine. Amgen sought to compel discovery from Hospira regarding two patents that Amgen had not included in its list of patents to be litigated pursuant to 42 U.S.C § 262(l)(3) and were therefore not patents-in-suit. Despite agreeing that the discovery sought was not relevant to the patents-in-suit, Amgen argued that it should be entitled to discovery regarding these patents because Hospira had failed to provide information relevant to those patents in its § 262(l)(2)(A) disclosure. Amgen argued that, absent discovery, Amgen lacked a reasonable basis under Rule 11 to include the two patent in its list of patents to be litigated pursuant to 42 U.S.C § 262(l)(3) or assert infringement of those patents.

The Federal Circuit found that it lacked jurisdiction over the appeal because Amgen sought an interlocutory review of a District Court discovery ruling that is reviewable from appeal of a final judgment. The Court further found, that Amgen failed to satisfy the prerequisites for mandamus by failing to establish a clear and indisputable right to discovery of the information it sought. The Federal Circuit reasoned that Amgen had other avenues for seeking the discovery from Hospira.  While the Court reiterated that a federal injunction compelling disclosures under § 262(l)(2)(A) was not available to Amgen, the Court found that Amgen could have listed the patents in its § 262(l)(3) disclosure and brought suit against Hospira on those patents without running afoul of Rule 11.

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