Baxter Healthcare Corp & Anor v Abbott Laboratories & Anor

In an action seeking a declaration of non-infringement, disclosure must be directed to an identified issue arising from the written product or process description and the patent claim. Evidence from real-world events cannot ordinarily supplement deficiencies in that description or establish infringement or non-infringement outside the pleaded issues. The court should not order disclosure merely to encourage settlement where orthodox relevance is not established. Interim experimental results are generally unsuitable for disclosure while the underlying investigations remain incomplete, because their evidential weight cannot yet be assessed and disclosure may impose disproportionate burdens on scientists conducting the work.

Baxter sought a declaration of non-infringement and revocation of a patent concerning sevoflurane and methods of preventing its degradation by Lewis acid. Abbott applied for disclosure of laboratory notebooks and other documents concerning degradation found in certain Baxter sevoflurane products used in vaporisers. Abbott argued that the material might bear on non-infringement and on whether it should continue resisting the claim. Baxter contended that the material was not relevant to the defined issues and concerned incomplete investigations. The application concerned whether the requested documents were relevant and proportionate to the issues in the forthcoming patent action.

1. The disclosure application was refused. The requested documents were not relevant to any identified issue in the action. A declaration of non-infringement concerned the formal description of the product or process and whether that description fell within the patent claim.
2. The evidence would ordinarily comprise expert analysis of the written product and process description, together with experiments directed to showing whether a product or process within that description satisfied the claim. The court was uneasy about using real-world events to supplement an inadequate product or process description, or to supplement proof of infringement or non-infringement with material falling outside the claim. No infringement counterclaim concerning the real products had been made.
3. The court would not order disclosure simply to encourage compromise. It would pause before requiring disclosure which was not justified by an orthodox exercise of the discretion having regard to the existing issues in the action.
4. There was a further and independent reason to refuse the application. The claimants’ investigations into the cause of the degradation were ongoing, including stability and compatibility testing. Disclosure of interim experimental results before the underlying experiments were complete and reported would be intrinsically unsatisfactory. The court should not impose the additional burden of requiring scientists to provide provisional results for speculation by lawyers and experts.
5. The application was therefore refused for lack of relevance and because disclosure would be inconvenient and disproportionate.