IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

EASTERN DIVISION 

ROXANE LABORATORIES, INC., 

 Plaintiff, 

vs. Civil Action 2:12-cv-312 

 Judge Watson 

 Magistrate Judge King 

ABBOTT LABORATORIES, et al., 

 Defendants. 

ABBVIE, INC., 

 Plaintiff, 

 Civil Action 2:13-cv-645 

 vs. Judge Watson 

 Magistrate Judge King 

ROXANE LABORATORIES, INC., 

 Defendant. 

OPINION AND ORDER 

 This matter is before the Court for consideration of plaintiff 

Roxane Laboratories, Inc.’s Motion to Compel Responses to 

Interrogatories (“Plaintiff’s Motion to Compel”), Doc. No. 115, 

defendant AbbVie Inc.’s Opposition to Plaintiff’s Motion to Compel 

Responses to Interrogatories (“Defendant’s Response”), Doc. No. 123, 

and plaintiff’s reply, Roxane Laboratories, Inc.’s Reply in Further 

Support of its Motion to Compel Responses to Interrogatories 

(“Plaintiff’s Reply”), Doc. No. 125. For the reasons that follow, 

Plaintiff’s Motion to Compel is DENIED. 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 1 of 9 PAGEID #: <pageID>
2 

I. Background 

Defendant AbbVie Inc. (“AbbVie”), is the holder of approved New 

Drug Application (“NDA”) No. 22-417 for ritonavir tablets, 100 mg, 

which is marketed and sold under the trade name Norvir®. No. 2:12-cv312 (S.D. Ohio), Doc. No. 58, ¶ 13. AbbVie also holds the regulatory 

exclusivities associated with that NDA. Id. Plaintiff Roxane 

Laboratories, Inc. (“Roxane” or “plaintiff”) has submitted Abbreviated 

New Drug Application No. 202573 (“ANDA 202573”) to the United States 

Food and Drug Administration in order “to obtain regulatory approval 

to engage in the commercial manufacture, use, or sale of generic oral 

ritonavir tablets, 100 mg,” which are the “bioequivalent” to Norvir®, 

“before the expiration of the Listed Patents.” No. 2:12-cv-312 (S.D. 

Ohio), Amended Complaint, Doc. No. 56, ¶ 16. 

Roxane filed suit in this Court on April 10, 2012 at 4:25 p.m., 

seeking a declaration of invalidity and non-infringement in connection 

with Patent Nos. 7,148,359 (the “̔359 patent”) and 7,364,752 (the 

“̔752 patent”) held by defendants Abbott Laboratories (“Abbott”) and 

AbbVie and relating to the drug Norvir®. See id. at ¶¶ 1, 11-13. At 

11:51 pm on that same day, Abbott filed suit in the United States 

District Court for the District of Delaware, alleging that Roxane’s 

ANDA infringed Abbott’s ‘359 patent, ‘752 patent, and Patent Nos. 

5,648,497 (the “̔497 patent”), 6,037,157 (the “̔157 patent”), and 

6,703,403 B2 (the “̔403 patent”), all related to the drug Norvir®. 

2:13-cv-645 (S.D. Ohio), Complaint, Doc. No. 1, ¶ 3; 2:13-cv-645 (S.D. 

Ohio), Amended Complaint, Doc. No. 8, ¶ 3. That action was transferred 

to this Court on June 18, 2013. Id., Order, Doc. No. 65. 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 2 of 9 PAGEID #: <pageID>
3 

A Rule 16 conference was held in the Ohio action on June 20, 

2012. No. 2:12-cv-312 (S.D. Ohio), Preliminary Pretrial Order, Doc. 

No. 29. Noting the pendency of the Delaware action and in an effort 

to “minimize the risk of duplicate discovery,” the Court ordered “that 

discovery conducted in either of the pending cases may be utilized, if 

otherwise appropriate, in the other case.” Id. at p. 2. 

On July 6, 2012 and September 7, 2012, Roxane propounded two sets 

of interrogatories in the Ohio action directed to the ̔359 and ̔752 

patents, which are referred to in the interrogatories as the “Patentsin-Suit.” Plaintiff’s Motion to Compel, p. 5, Exhibits 7, 12. Roxane 

also specified that, should the Delaware action be transferred to the 

Southern District of Ohio, “the term ̔Patents-in-Suit’ shall also 

include” the ʽ497, ̔157, and ̔403 patents (collectively the 

“transferred patents”). Id. at Exhibit 7, p. 3 n.1. Roxane also 

sought extensive discovery in the Ohio action regarding the 

transferred patents. See Order, Doc. No. 64. On December 19, 2012, 

the Court conferred with counsel for all parties regarding Roxane’s 

requested discovery relating to the transferred patents and concluded 

that discovery related to the transferred patents was not relevant to 

the Ohio action. Id. 

The United States District Court for the District of Delaware did 

not conduct a Rule 16 conference nor did it issue a scheduling order. 

Nevertheless, on February 14, 2013, the parties accepted that court’s 

jurisdiction for the limited purpose of resolving discovery disputes 

and they stipulated to the “production of documents and things.” No. 

2:13-cv-645 (S.D. Ohio), Stipulation Regarding Discovery of Documents 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 3 of 9 PAGEID #: <pageID>
4 

and Things, Doc. No. 53. On March 11, 2013, Roxane served 

interrogatories in the Delaware action related to the transferred 

patents. Plaintiff’s Motion to Compel, Exhibit 14. 

On June 18, 2013, AbbVie was substituted as a party for Abbott in 

the Delaware action, and Roxane’s motion to transfer the Delaware 

action to this Court was granted. No. 2:13-cv-645 (S.D. Ohio), Doc. 

Nos. 13, 65. At the time, AbbVie had not answered any of Roxane’s 

interrogatories addressing the transferred patents. Defendant’s 

Response, p. 2. On July 3, 2013, AbbVie objected to the 

interrogatories on the basis that the interrogatories had been 

improperly served because they were not yet authorized in the 

transferred action. Id. at Exhibit 10. On July 18, 2013, Roxane 

filed Plaintiff’s Motion to Compel, seeking to compel response to 

interrogatories relating to the transferred patents and deeming all 

objections waived pursuant to Fed. R. Civ. P. 33(b)(4). Plaintiff’s 

Motion to Compel, p. 2. 

As noted supra, the Delaware action was transferred to this Court 

on June 18, 2013. On July 23, 2013, the parties’ July 9, 2013 

joint motion to consolidate the Ohio action and the transferred action 

was granted. No. 2:12-cv-312 (S.D. Ohio), Doc. No. 120; No. 2:13-cv645 (S.D. Ohio), Doc. No. 69. 

Roxane’s contested discovery requests contain both contention and 

non-contention interrogatories. AbbVie served responses to the noncontention interrogatories on August 2, 2013; AbbVie has not responded 

to the contention interrogatories. Defendant’s Response, p. 2; 

Plaintiff’s Reply, PAGEID 3580; No. 2:12-cv-312 (S.D. Ohio), Order, 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 4 of 9 PAGEID #: <pageID>
5 

Doc. No. 124, p. 2. The Court conferred with counsel on August 8, 

2013 to establish a revised pretrial schedule for the consolidated 

case. No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124. After 

conferring with counsel, the Court ordered, inter alia, that AbbVie 

respond to Roxane’s contention interrogatories no later than September 

30, 2013 or by another date set by the Court in resolving Plaintiff’s 

Motion to Compel. Id. at p. 2. 

II. Standard 

Rule 37 of the Federal Rules of Civil Procedure authorizes a 

motion to compel discovery when a party fails to provide proper 

response to requests for production of documents under Rule 34. Fed. 

R. Civ. Pro. 37(a)(3)(B). “The proponent of a motion to compel 

discovery bears the initial burden of proving that the information 

sought is relevant.” Martin v. Select Portfolio Serving Holding 

Corp., No. 1:05–cv–273, 2006 U.S. Dist. LEXIS 68779, at *2 (S.D. Ohio 

Sept. 25, 2006) (citing Alexander v. Fed. Bureau of Investigation, 186 

F.R.D. 154, 159 (D.D.C. 1999)). 

Rule 26(b) provides that “[p]arties may obtain discovery 

regarding any nonprivileged matter that is relevant to any party’s 

claim or defense.” Fed. R. Civ. P. 26(b)(1). Relevance for discovery 

purposes is extremely broad. Lewis v. ACB Bus. Servs., Inc., 135 

F.3d 389, 402 (6th Cir. 1998). “The scope of examination permitted 

under Rule 26(b) is broader than that permitted at trial. The test is 

whether the line of interrogation is reasonably calculated to lead to 

the discovery of admissible evidence.” Mellon v. Cooper-Jarrett, 

Inc., 424 F.2d 499, 500-01 (6th Cir. 1970). However, “district courts 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 5 of 9 PAGEID #: <pageID>
6 

have discretion to limit the scope of discovery where the information 

sought is overly broad or would prove unduly burdensome to produce.” 

Surles ex rel. Johnson v. Greyhound Lines, Inc., 474 F.3d 288, 305 

(6th Cir. 2007) (citing Fed. R. Civ. P. 26(b)(2)). See also Lewis, 

135 F.3d at 402 (determining the proper scope of discovery falls 

within the broad discretion of the trial court). In determining the 

proper scope of discovery, a district court balances a party’s “right 

to discovery with the need to prevent ‘fishing expeditions.’” Conti 

v. Am. Axle & Mfg. Inc., 326 F. App’x 900, 907 (6th Cir. 2009) 

(quoting Bush v. Dictaphone Corp., 161 F.3d 363, 367 (6th Cir. 1998)). 

Finally, the party moving to compel discovery must certify that 

it “has in good faith conferred or attempted to confer with the person 

or party failing to make disclosure or discovery in an effort to 

obtain it without court action.” Fed. R. Civ. P. 37(a)(1). See also

S.D. Ohio Civ. R. 37.2. This prerequisite has been met in this case. 

III. Discussion 

As discussed supra, Roxane seeks an order compelling response to 

interrogatories concerning the transferred patents. Plaintiff’s 

Motion to Compel, PAGEID 3321. AbbVie does not dispute the relevance 

of the interrogatories and, in fact, the Court has already ordered 

AbbVie to respond to the interrogatories that remain outstanding. No. 

2:12-cv-312 (S.D. Ohio), Order, Doc. No. 124, p. 2. Nevertheless, 

AbbVie takes the position that Plaintiff’s Motion to Compel should be 

denied because the contested interrogatories were not authorized 

either in the Delaware action or by this Court. Defendant’s Response, 

PAGEID 3517. 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 6 of 9 PAGEID #: <pageID>
7 

Roxane argues that it “[a]ppropriately and [t]imely [s]erved” two 

sets of interrogatories directed to the transferred patents. 

Plaintiff’s Motion to Compel, PAGEID 3324. “First, Roxane served 

interrogatories in the Ohio action . . . on July 6, 2012 and September 

7, 2012 . . . . Second, Roxane served interrogatories in the Delaware 

action on March 11, 2013 . . . .” Id. These interrogatories “became 

ripe,” Roxane argues, “[o]nce the Delaware action was transferred to 

this Court” because (1) “the parties long ago met their Rule 26(f) 

obligations in the Ohio case . . . [and] the parties filed a joint 

motion to consolidate the two actions in Ohio” and (2) the discovery 

requests in the Ohio action covered the transferred patents once the 

Delaware action was transferred to this Court. Plaintiff’s Reply, 

PAGEID 3578-79. See also id. at PAGEID 3581 (arguing that the 

procedural posture of the Delaware action “became irrelevant once the 

Delaware action was transferred.”). Roxane’s arguments are without 

merit. 

Plaintiff’s Motion to Compel was filed on July 18, 2013, i.e.,

before the consolidation of the transferred action and the Ohio 

action. However, interrogatories directed at the transferred patents 

were not proper in either action prior to consolidation. 

Significantly, the court in the Delaware action did not issue a 

scheduling order, neither this Court nor the court in the Delaware 

action authorized discovery in the Delaware action prior to 

consolidation, and the parties’ February 14, 2013 stipulation to 

permit limited discovery, No. 12-cv-645 (S.D. Ohio), Stipulation 

Regarding Discovery of Documents and Things, Doc. No. 53, did not 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 7 of 9 PAGEID #: <pageID>
8 

authorize or contemplate interrogatories. Roxane’s interrogatories in 

the Ohio action do contemplate the discovery of information relating 

to the transferred patents should the Delaware action be transferred 

to the Southern District of Ohio, see Plaintiff’s Motion to Compel, p. 

5, Exhibit 7 at p. 3 n.1; however, the transferred patents did not 

become relevant to the Ohio action until the cases were consolidated 

because neither the transfer of the Delaware action to the Southern 

District of Ohio nor the parties’ agreement to consolidate rendered 

the transferred patents relevant to the Ohio action. See Fed. R. Civ. 

P. 42 (“If actions before the court involve a common question of law 

or fact, the court may . . . consolidate the actions”) (emphasis 

added). As this Court concluded on December 19, 2012, discovery 

related to the transferred patents, as a group, was “not expressly at 

issue in [the Ohio] action” and had not been established as relevant 

to the Ohio action. Order, Doc. No. 64. Roxane has not provided a 

persuasive reason to alter this conclusion. The transferred patents 

therefore did not become relevant to the Ohio action until the cases 

were consolidated on July 23, 2013, i.e., five days after Roxane filed 

its motion to compel. 

 Although discovery relating to the transferred patents is now 

authorized in the consolidated cases, such discovery was not 

authorized in either action prior to consolidation. Roxane’s motion 

to compel response to interrogatories propounded prior to the 

consolidation and directed to the transferred patents is therefore 

without merit. 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 8 of 9 PAGEID #: <pageID>
9 

Roxane also seeks an order deeming all objections to the 

contested interrogatories waived pursuant to Fed. R. Civ. P. 33(b)(4). 

Plaintiff’s Motion to Compel, p. 2. Roxane argues that AbbVie failed 

to timely respond to the interrogatories and has therefore waived all 

objections to the interrogatories. Rule 33(b)(4) provides that “[a]ny 

ground not stated in a timely objection [to an interrogatory] is 

waived unless the court, for good cause, excuses the failure.” Fed. 

R. Civ. P. 33(b)(4). Because Roxane’s interrogatories were not 

authorized at the time they were propounded, AbbVie was not required 

to timely object to those interrogatories. AbbVie has not, therefore, 

waived any objection to those interrogatories. 

Plaintiff’s Motion to Compel, Doc. No. 115, is therefore DENIED. 

AbbVie shall respond to Roxanne’s contention interrogatories by 

September 30, 2013. See No. 2:12-cv-312 (S.D. Ohio), Order, Doc. No. 

124, p. 2. 

September 3, 2013 s/Norah McCann King_______ 

 Norah McCann King 

 United States Magistrate Judge 

Case: 2:12-cv-00312-MHW-NMK Doc #: 128 Filed: 09/03/13 Page: 9 of 9 PAGEID #: <pageID>