Discovery orders varied in patent revocation case

Discovery – appeals against an order for discovery made by the High Court concerning a petition seeking revocation of Irish patent – obviousness over three pieces of prior art – lack of sufficiency and/or plausibility – patent protection – Supplementary Protection Certificate – English High Court proceedings relating to the equivalent UK 220 Patent – medicinal product containing Tiotropium in a capsule for inhalation – test of relevance includes those documents which as a matter of probability may lead to “a line of inquiry” – High Court judge insufficiently took into account the manner in which Teva proceeded with the English proceedings – issue of inventive step over the cited prior art – relevance and necessity – trial judge was correct in making an order of discovery in respect of the patent file – trial judge was in error on the facts herein in concluding that the discovery of U-notes which relate to the conception, development and reduction to practice of the subject matter and laboratory notes are necessary for the fair disposal of these proceedings – cost, volume of documentation and multiple data sources which would have to be searched over long periods and the complications of the confidentiality issues – trial judge was in error on the facts herein in concluding that discovery of the very significant volume of documents potentially within categories 2 and 3 is necessary – timing of discovery – trial judge was acting well within his discretion in determining that the documents which Boehringer had agreed to discover should be made available to Teva in advance of the preparation of its witness statements – vary High Court order – appeal allowed.