Samsung Bioepis UK Ltd v Janssen Biotech, Inc.
[2024] EWHC 2442 (Pat)
Dr Reddy's Laboratories (UK) Limited & Ors v Warner-Lambert Company LLC
1 February 2023
[2023] EWCA Civ 73
Court of Appeal
A drug company tried to reduce how much it had to pay competitors after losing a patent case. The court said no, because the company should have raised these points earlier and was trying to get around previous rulings.
Key Facts
- •Appeal against an order refusing Warner-Lambert permission to amend its Points of Defence in two respects.
- •The case concerns claims for compensation due to interim orders and cross-undertakings related to a patent for pregabalin.
- •The amendments relate to whether damages should be reduced based on the potential infringement of valid claims of the patent in a counterfactual scenario.
- •The first amendment argues it would be unjust to compensate for losses from pregabalin sales even if no infringement occurred, focusing on equity.
- •The second amendment argues that Dr Reddy's profits should be reduced due to potential pharmacist infringement of the patent in a counterfactual scenario, invoking the doctrine of illegality.
- •The underlying dispute is about the validity and infringement of a second medical use patent for pregabalin to treat pain.
- •The case involved multiple proceedings, appeals, and judgments from the Patents Court and Court of Appeal, and Supreme Court.
Legal Principles
Assessment of compensation under a cross-undertaking is equitable, requiring flexibility to ensure just compensation.
Hoffmann-La Roche & Co. AG v Secretary of State [1975] 1 AC 295; Abbey Forwarding Ltd v Hone (No 3) [2014] EWCA Civ 711
The monopoly granted by a patent is defined by its claims and the right to bring infringement proceedings; it does not extend beyond.
Patents Act 1977, section 14; European Patent Convention, articles 83 and 84
Abuse of process on Henderson v Henderson grounds occurs when a claim or defence should have been raised in earlier proceedings.
Johnson v Gore Wood & Co [2002] 2 AC 1; Dexter Ltd v Vlieland-Boddy [2003] EWCA Civ 14
Patent infringement is not a relevant form of illegality barring compensation unless criminal or quasi-criminal.
Les Laboratoires Servier v Apotex Inc [2014] UKSC 55
Infringement under section 60(1)(b) and 60(2) of the Patents Act 1977 requires the relevant party to have the necessary mental element; mere foreseeability is insufficient.
Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56
Section 60(1)(c) of the Patents Act 1977 imposes strict liability for dealing with a product obtained directly by a patented process, irrespective of knowledge.
Warner-Lambert Co LLC v Generics (UK) Ltd [2018] UKSC 56
Outcomes
Appeal dismissed.
The first amendment lacked a real prospect of success as it misconstrued the scope of a patent monopoly. The second amendment was an abuse of process as it should have been raised in earlier proceedings.