Plaintiff's Prior Settlement Agreements/Licenses Concerning its Patented Drug are Discoverable as Relevant to Secondary Considerations and Misuse

The court granted in part defendant's motion to compel the production of prior settlement agreements concerning plaintiff's drug, Lipitor®, but not documents relating to such agreements. The settlement agreements were relevant to secondary considerations and patent misuse. With respect to secondary considerations, "[defendant's] theory is that previous commercial success is tied to [plaintiff's] since-expired . . . patent, which it asserts was a patent integral to [plaintiff's settlement with a defendant in an earlier case]." With respect to misuse, "[plaintiff] cannot merely assert that no patent misuse occurred and direct [defendant] to publicly available documents and press releases to confirm that. [Defendant] needn't take [plaintiff] or [a settling third party's] word on whether [plaintiff] misused a patent. No sane defendant would."

Pfizer Inc. et al v. Apotex Inc. et al., 1-08-cv-07231 (ILND August 4, 2010, Memorandum) (Ashman, M.J.)