Court Grants BI Motion to Compel Discovery in Adalimumab Litigation

On Monday, Magistrate Judge Lloret, who is visiting the U.S. District Court for the District of Delaware from the Eastern District of Pennsylvania, granted Boehringer Ingelheims’s (“BI’s”)  motion to compel discovery relating to its unclean hands defense in the ongoing AbbVie v. Boehringer Ingelheim litigation concerning BI’s aBLA for a biosimilar version of AbbVie’s Humira (adalimumab) product.  As we previously reported, BI’s defenses and counterclaims alleged that AbbVie engaged in “a global effort to improperly delay competition with respect to adalimumab” by pursuing “overlapping and non-inventive patents for the purpose of developing a ‘patent thicket[.]'”  BI argued that the discovery sought was directly relevant and tailored to these defenses and counterclaims. AbbVie responded that BI should be denied the requested discovery because it failed to plead the defense of unclean hands adequately. Judge Lloret held that though BI’s theory “may or may not be viable as a patent defense or as basis for relief by way of counterclaim. . . . [a] discovery motion is not a good mechanism for litigating the substance of the defense” and therefore BI “is entitled to discovery that is reasonably and proportionally directed to its claims.”

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