Regeneron Pharmaceuticals Inc. v. Novartis Pharma AG
- Philip Halpern
- 7:20-cv-05502
- U.S. District Court · Southern District of New York
- 6
In Regeneron v. Novartis, Judge Halpern granted a request for a conference about a disputed deposition topic.
Regeneron Pharmaceuticals, Inc. and the Novartis defendants, whose dispute concerns the scope and privilege of testimony sought in a deposition.
What happened
Regeneron Pharmaceuticals asked the court to address a dispute over Novartis’s request for testimony about Regeneron’s prosecution of a 2022 patent application. Regeneron said the request sought irrelevant or privileged information and went beyond the topic’s wording.
Novartis said the testimony was relevant to Regeneron’s claim that Novartis committed fraud by withholding prior art during prosecution of another patent. Novartis argued that Regeneron’s own handling of the same prior-art reference could show that Novartis’s conduct was reasonable and that some requested information was not privileged.
Judge Philip M. Halpern granted the application for a conference, scheduled for August 28, 2025, at 3:30 p.m. The opinion did not decide whether the disputed testimony must be provided or whether Regeneron was entitled to a protective order.
The detailed version
- Regeneron Pharmaceuticals Inc. v. Novartis Pharma AG · No. 7:20-cv-05502
- Philip Halpern
- Aug. 20, 2025
Background
The parties jointly asked for a conference under the court’s local rules and Judge Halpern’s individual practices to resolve a dispute concerning Novartis’s Rule 30(b)(6) deposition Topic No. 36. That topic requested testimony about the prosecution of Regeneron’s U.S. Patent Application No. 17/930,373, filed in 2022. Regeneron also sought authorization to file a motion for a protective order if the dispute remained unresolved.
Regeneron’s position
Regeneron argued that Topic No. 36 was irrelevant to the case. It said Novartis was seeking information about whether Regeneron disclosed the Sigg Application, also identified in Novartis’s submission as the Sterilization Method Application, during prosecution of the ’373 application. Regeneron contended that its conduct could not excuse Novartis’s alleged withholding of prior art during prosecution of Novartis’s ’352 application, which was the basis of one of Regeneron’s claims.
Regeneron also argued that information about its prosecution decisions and the factors it considered was protected by attorney-client privilege or work-product protection. It further contended that Novartis was improperly trying to expand the topic to cover Regeneron’s general practices for disclosing prior art, even though the topic as written referred specifically to the ’373 application.
Novartis’s position
Novartis argued that Regeneron’s prosecution of the ’373 application was relevant to whether Novartis reasonably declined to disclose the Sterilization Method Application during prosecution of Novartis’s ’631 patent. Novartis said both matters involved a terminally sterilized anti-VEGF prefilled syringe and that Regeneron knew of, but did not initially disclose, the same prior-art application during prosecution of the ’373 application.
Novartis stated that the examiner later found and cited the Sterilization Method Application, and that Regeneron successfully argued that the reference did not prevent allowance of the ’373 claims. Novartis sought testimony about why Regeneron did not disclose the reference and about the public positions Regeneron took during prosecution. It argued that those subjects were relevant and not necessarily privileged.
Ruling
The court’s order states: “Application granted.” It scheduled a conference for August 28, 2025, at 3:30 p.m. in Courtroom 620 of the White Plains courthouse. The order did not rule on the relevance, privilege, scope, or production of the requested testimony, and it did not decide whether to issue a protective order.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.