Quarter-Century Patent War Crawls Toward Trial

     (CN) - An Israeli drugmaker improperly withheld documents from a 24-year-old dispute with Abbott over the patent for a protein that has been implicated in various diseases.
     Israeli pharmaceutical company Yeda Research and Development and Abbot GMBH & Co., a German subsidiary of Illinois-based Abbott Labs, had filed patent applications just nine days apart in 1989 for the isolation of a certain protein.
     Abbott has said Tumor Necrosis Factor Binding Protein-II, or TBP-II, is isolated from the urine of individuals with a fever and from the accumulated fluid that sometimes presents itself among people with cirrhosis, severe liver disease or metastatic cancer.
     The protein purportedly binds to and neutralizes potentially harmful polypeptides, but U.S. District Judge Rosemary Collyer prefaced a short redaction by noting that there is no indication in the record of "how the discovery of TBP-II has been significant medically."
     Abbott and Yeda have nevertheless spent the last 24 years fighting over which company has priority to the patent rights for the protein in the United States.
     Each has seen its share of victory and defeat. A court granted Abbott the U.S. patent in 2000, but Yeda convinced the U.S. Patent and Trademark Office to invalidate Abbott's patent the same year. Another judge then vacated that decision, and on remand the patent office found for Abbott.
     They have recently completed discovery in another arm of the current dispute that Yeda initiated as the plaintiff in 2010. Abbott recently complained, however, that Yeda improperly withheld certain materials from that discovery. It specifically sought documents connected to 2003 experiments attended by Yeda personnel that Abbott performed to replicate the original 1989 experiments that led to the discovery of TBP-II.
     Judge Collyer granted Abbott's motion to compel after finding that Dr. Hartmut Engelmann, a Yeda representative who attended the experiments, was working as a testifying expert at the time.
     She shot down Yeda's claim that, as an observer, Engelmann acted in a different role than as a legal expert.
     "Even a man as highly educated as Dr. Engelmann cannot be expected to draw a mental line in the sand between information gleaned from a behind-the-scenes look at Abbott's process in 2003 and information he learned otherwise," Collyer wrote. "It would be impracticable to ask such a Herculean task of dual-hat experts, or even of experts generally."
     She said that "the line of demarcation Yeda has drawn is more illusory than real. Counsel for Yeda acknowledged at oral argument that, in a nutshell, Dr. Engelmann's expert testimony will be that the protocols Yeda performed in 1989 as a prelude to its 339 Application are divergent from the protocols described in Abbott's 072 Application. ... Moreover, Dr. Engelmann himself acknowledged reading at least his own 2003 report in preparation for his fact deposition in this case, further demonstrating that the overlap in subject matter is sufficient to justify granting Abbott's motion to compel."
     The judge refused, however, to compel Yeda's production of documents related to Engelmann's royalty agreement with other Yeda inventors.