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.
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