PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 22-1094

In re: ELI LILLY AND COMPANY; ELI LILLY ITALIA S.P.A.; ELI LILLY KINSALE LIMITED; ELI LILLY GES.M.B.H.; ELI LILLY NEDERLAND B.V.

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ELI LILLY AND COMPANY; ELI LILLY ITALIA S.P.A.; ELI LILLY KINSALE LIMITED; ELI LILLY GES.M.B.H.; ELI LILLY NEDERLAND B.V.,

Movants - Appellants,

v.

NOVARTIS PHARMA AG,

Respondent - Appellee.

Appeal from the United States District Court for the Eastern District of Virginia, at Alexandria. T. S. Ellis, III, Senior District Judge. (1:21-mc-00017-TSE-IDD)

Argued: May 4, 2022 Decided: June 16, 2022

Before NIEMEYER and DIAZ, Circuit Judges, and FLOYD, Senior Circuit Judge.

Affirmed by published opinion. Judge Niemeyer wrote the opinion, in which Judge Diaz and Senior Judge Floyd joined.

ARGUED: Katherine Ann Helm, DECHERT, LLP, New York, New York, for Appellants. William M. Jay, GOODWIN PROCTER, LLP, Washington, D.C., for Appellee. ON BRIEF: Christina Guerola Sarchio, DECHERT LLP, Washington, D.C., USCA4 Appeal: 22-1094 Doc: 46 Filed: 06/16/2022 Pg: 2 of 16

for Appellants. Jordan Bock, GOODWIN PROCTER LLP, Boston, Massachusetts, for Appellee.

2 USCA4 Appeal: 22-1094 Doc: 46 Filed: 06/16/2022 Pg: 3 of 16

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 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.

I

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

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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

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