Court of Appeal gives judgment in latest Swiss form case

01 June 2015

On 28 May 2015, the English Court of Appeal handed down its decision in the already oft reported ongoing litigation between Warner-Lambert Company, LLC (Warner-Lambert) and Actavis Group PTC EHF (Actavis) and others. The dispute relates to second medical use patent claims in connection with Warner-Lambert’s Lyrica product.

For details of the first instance decisions to which the appeal relates, please see the latest edition of our IP disputes newsletter, a copy of which can be found here.

In summary, in the High Court, Mr Justice Arnold held that Warner-Lambert would only be able to succeed on infringement if it could demonstrate that Actavis (the generic) had had a subjective intention and, as such, had aimed or targeted the patented use in some way. The judge also struck out Warner-Lambert’s claim for indirect infringement of the patent.

In a judgment given by Lord Justice Floyd, the Court of Appeal widened the test for infringement of second medical use patents. Floyd LJ held that it was sufficient for infringement that the producer knows, ought to know, or could reasonably foresee that the medicine would ultimately be used (in this instance) for pain relief. The judge also said that Arnold J’s subjective intention test amounted, in effect, to requiring the patentee to prove that it was the generic’s “wish or desire”  to sell some medicine for the patented indication - this was not the right test.

Floyd LJ added “it is plain that Warner-Lambert have an arguable case of infringement” . He also allowed their appeal against the striking out of the indirect infringement claim.

The judge amended the draft notice to be placed on packaging to be supplied to pharmacists as follows:

“This product is not authorised for the treatment of pain and must should not be dispensed for such purposes pain.”

This modification reflected the fact that there may be regulatory and other concerns about a notice in the form requested by Warner-Lambert being on the pack itself - not least because it may come to the attention of patients, to whom it might be open to misinterpretation. Floyd LJ further modified the relief sought by Warner-Lambert in recognition of the fact that it wanted to impose contractual restrictions on Actavis which might deter some pharmacists from stocking the Actavis product other than for pain (i.e. lawfully). The judge went on to say that even if infringement were to be found at trial “it does not follow that unqualified relief will follow as of right”.

This is yet another interesting development in this case in which the trial is set down for the end of June.

Warner-Lambert Company, LLC –v- Actavis Group Ptc EHF & Others [2015] EWHC 72 (Pat)

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