Eli Lilly & Co. v. Novartis Pharma AG (In re Eli Lilly & Co.)

Eli Lilly & Co. v. Novartis Pharma AG (In re Eli Lilly & Co.)

Opinion

 [*162]  NIEMEYER, Circuit Judge:

Eli Lilly and Company and its foreign subsidiaries (collectively, "Eli Lilly") applied to the district court under 28 U.S.C § 1782 for an order requiring Novartis Pharma AG to provide discovery for use in ongoing patent litigation between the two companies in various European countries. Section 1782(a) authorizes a district court, in its discretion, to order a person who "resides or is found" in its district to provide discovery for use in a foreign tribunal.

After Novartis intervened and objected to Eli Lilly's application, the district court entered an order denying the application, concluding (1) that Novartis was not "found" in the Eastern District [**2]  of Virginia because it lacked a physical presence there; (2) that, assuming "found" was coextensive with the constitutional limits of personal jurisdiction, as Eli Lilly argued, Novartis was still not "found" in the district; and (3) that, in any event, discretionary factors identified by the Supreme Court weighed against granting Eli Lilly's application in the circumstances of this case.

On Eli Lilly's appeal challenging each ground given by the court, we affirm the district court's order based on the first and third grounds and therefore find it unnecessary to address the second.

Eli Lilly is an international pharmaceutical company based in Indiana, and Novartis is an international pharmaceutical company based in Switzerland. Both companies produce anti-psoriasis drugs that rely on "a monoclonal antibody that targets and binds [the relevant protein]," and both companies have patents or pending patent applications relating to their drugs. As for Novartis, it purchased a patent portfolio from Genentech, Inc. in 2020 that included, among others, two relevant European patents and three relevant U.S. patent applications.

After acquiring the patent portfolio, Novartis filed patent-infringement [**3]  actions against Eli Lilly in several European countries, including Germany, Ireland, Italy, Austria, and Switzerland. In response, Eli Lilly not only challenged the validity of at least one of Novartis's European patents (including by initiating a separate action against Novartis in the Netherlands), but it also contended that Novartis was engaging in anticompetitive conduct by abusing a "dominant position in a relevant European market." In addition, it has stated that it intends to file complaints against Novartis for anticompetitive conduct with one or more of the European agencies regulating competition.

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