Warner-Lambert Company, LLC v Actavis Group Ptc Ehf and Others
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Arnold |
| Judgment Date | 06 February 2015 |
| Neutral Citation | [2015] EWHC 249 (Pat) |
| Court | Chancery Division (Patents Court) |
| Date | 06 February 2015 |
| Docket Number | Case No: HC-2014-001795 |
[2015] EWHC 249 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. Justice Arnold
Case No: HC-2014-001795
Mr. Andrew Waugh QC and MR. MILES COPELAND (instructed by Allen & Overy LLP) for the Claimant
Mr. Adrian Speck QC (instructed by Powell Gilbert LLP) for the First, Second and Third Defendants
I left outstanding in the judgment that I have handed down this morning the question of whether Warner-Lambert's infringement claim pursuant to section 60(2) of the 1977 Act should be allowed to proceed to trial in circumstances where I have decided that Warner-Lambert's claim under section 60(1)(c) should go to trial. Having heard further argument on that question this morning, the conclusion to which I have come is that Warner-Lambert's claim under section 60(2) should not be allowed to proceed to trial. My reasons are as follows.
First and most fundamentally, it seems to me that the claim under section 60(2) is simply hopeless. As counsel for Warner-Lambert accepted, the claim under section 60(2) is premised upon interpreting a Swiss form claim in the same way as an EPC 2000 claim, and in particular in interpreting it as a product claim or, at any rate, as equivalent to a product claim. In my view, that contention is wholly unsustainable. It is contrary to settled jurisprudence both in this country and in the EPO Boards of Appeal. I refer in particular to John Wyeth & Brother Ltd's Application [1985] RPC 545, 563; Monsanto & Co. v Merck & Co. Inc. [2000] RPC 77, 92–93; Actavis UK Ltd v Merck & Co. Inc. [2008] EWCA Civ 444, [2009] 1 WLR 1186 at paragraphs 27 and 75; and Case T 1780/12University of Texas Board of Regents/Cancer treatment [2014] EPOR 28 at paragraphs 18–27. In order to succeed in its claim under section 60(2) Warner-Lambert would have to persuade the Supreme Court to overrule Monsanto v Merck on this point. I see no prospect of that occurring.
Secondly, while I have accepted in the judgment that I have handed down this morning that, so far as the claim under section 60(1)(c) is concerned, this is a developing area of law and therefore it is right not to strike out the claim, it seems to me that the position is different with regard to 60(2). The uncertainty, to the extent that there is uncertainty, with regard to...
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