Teva Pharmacuetical Industries Limited & Anor v Bayer Intellectual Property GmbH

Under Practice Direction 57, a document is “mentioned” only where the evidence contains a direct allusion or specific reference to the document. A reference to an event from which a document may be inferred is insufficient.

Extended disclosure may be ordered or revisited where a document is relevant and its production is reasonable and proportionate. A previous order providing for no extended disclosure may be varied when later circumstances make disclosure necessary. The court must weigh the factors in paragraph 6.4, including the document’s likely probative value, importance of the proceedings, ease of retrieval, cost, delay and trial disruption.

The judgment concerned an interlocutory application by Teva, brought for the benefit of several generic drug manufacturers, in patent revocation proceedings concerning rivaroxaban. Teva sought production of presentation slides or related materials used at an American Chemical Society conference in 2004, where the chemical identity of a Bayer compound had apparently been disclosed.

The document was said to bear on whether Bayer would have disclosed the compound’s identity if asked. Bayer resisted production, arguing that the document was not “mentioned” in a witness statement, was insufficiently probative, and could not be sought under the existing disclosure order. The central issues were whether the document was mentioned, whether extended disclosure could be ordered or varied, and whether production was reasonable and proportionate.

1. Meaning of “mentioned”. The court adopted the summary in FCA v Papadimitrakopoulos [2022] EWHC 2061 (Ch), drawing on Expandable v Rubin [2008] EWCA Civ 59 and Dubai Bank Ltd v Galadari (No 2) [1991] WLR 721. A direct allusion or specific mention is required. A reference to an occasion on which a document was probably used, without reference to the document itself, is insufficient. The presentation materials were therefore not “mentioned” under paragraph 21 of Practice Direction 57.
2. Availability of extended disclosure. An order stating that there shall be no extended disclosure is, in substance, an order about extended disclosure and may be varied under paragraph 18 where later disclosure becomes necessary. The emergence of the issue in its present form through point-specific pleadings independently justified revisiting the disclosure position. The judge also considered that, if no order existed to vary, a fresh application could logically be made under paragraphs 6 and following.
3. Reasonableness and proportionality. Relevance alone was insufficient. Applying paragraph 6.4, the proceedings were complex and important; the document was likely to exist, easy to retrieve and potentially probative; production involved little cost or practical difficulty; and any delay was not materially disruptive. The application therefore satisfied the applicable disclosure criteria.
4. The pleading question concerning reliance on enquiries specifically made to Dr Roehrig was left open for determination at or before trial. The possible need for further evidence did not justify refusing disclosure.
5. The court ordered disclosure. It awarded indemnity costs against Bayer, with assessment by a costs judge.