Warner-Lambert Company LLC (Claimant/Part 20 Defendant) v Teva UK Ltd and Others (Defendant/Part 20 Claimants)
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Floyd |
| Judgment Date | 22 July 2011 |
| Neutral Citation | [2011] EWHC 2018 (Ch) |
| Docket Number | Case No: HC11CO2091 |
| Date | 22 July 2011 |
| Court | Chancery Division |
[2011] EWHC 2018 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr. Justice Floyd
Case No: HC11CO2091
Mr. Richard Meade and Mr. Joe Delaney (instructed by Allen & Overy) appeared for the Claimant.
Mr. Antony Watson QC and Mr. Tom Mitcheson (instructed by Taylor Wessing) appeared for Defendants (1) to (5) and the Intended Defendant Day Lewis PLC.
Mr. Christopher Hall (instructed by Kempner & Ptnrs) appeared for the Intended Defendant ASDA Store Limited.
HTML VERSION OF JUDGMENT
This is an application by the lead defendant in a patent action, Teva UK Limited, for an expedited trial. The action relates to the drug atorvastatin, which is protected by SPC GB 97011. The drug atorvastatin is marketed by Warner-Lambert Company LLC (the claimant) as Lipitor. Lipitor is one of the world's most successful drugs. In the last year for which figures are given in the evidence, the turnover in Lipitor exceeded £350 million.
When the action was started, on 21st June 2011, the SPC was due to expire later that year but a paediatric extension has now been granted so that the SPC will now expire in May 2012.
Teva launched generic atorvastatin, without notice to Warner-Lambert, on 20th June 2011. Their commercial reason for doing so is that the alternative of giving the patentee notice and seeking revocation of the patent in advance of the launch prevents Teva from gaining a marketing advantage over other generic companies. It is reasonably well established from this and other cases that the price of a drug protected by a patent can be sustained at or near the monopoly price when a first generic company enters the market, but after this period of so-called duopoly there is a more rapid fall in price. That means that participation in the market becomes much less profitable.
Teva's strategy for getting on the market in advance of its competitors has thus far proved to be unsuccessful. I granted a without notice injunction on 21st June to restrain further sales. That injunction has now been continued to trial by consent. The question of a speedy trial was not addressed in the evidence on the application. It was raised once the application for the interim injunction had been compromised.
Teva, therefore, seek a trial of this action in November 2011. Warner-Lambert are not in principle opposed to an order for a speedy trial, provided that they are given adequate time to prepare their case properly without having to compromise. They would be content if the trial were in February 2012, a date which, as they point out, itself involves a degree of expedition.
Teva's case that an expedited trial is justified is explained by Mr. Cohen, their solicitor, in his witness statement.. In paragraph 2 and 3, he says:
"The claimant (Warner-Lambert) agrees that there should be a speedy trial (see A & O's letter of 10th July) and indeed it is well established that a speedy trial should follow where an interim injunction is granted. The only issue here is how speedy the trial should be."
Whilst I accept that the existence of an injunction is a factor to be taken into account in setting a timetable for trial, I am very far from accepting that wherever there is an injunction in an intellectual property case, a speedy trial should follow as a matter of course.
In paragraph 4 Mr. Cohen says:
"The SPC for EP 633 expires on 6 May 2012. Therefore, if the trial is not until February 2012, it is possible that judgment will not be handed down until April or even later, thus coming extremely close to the date of SPC expiry. If judgment was not handed down until close to or after expiry, the result of this would be that all the generic companies would launch at much the same time and the benefit of invalidating the patent would have been greatly diminished. Bearing in mind that the defendants are the subject of an interim injunction, it seems only fair that a trial date is ordered for as early a date as possible, so long as the parties are not prejudiced in any way."
The corollary of what Mr. Cohen says in that paragraph is that if judgment is handed down invalidating the patent after a speedy trial in November 2011, as opposed to February 2012, all the generic companies will not launch at the same time, and that Teva will still gain a head start over its competitors.
Mr. Meade QC, for Warner-Lambert, points out that this does not follow at all. The evidence for the interim injunction showed that Teva's estimate was that a generic company could be ready to launch within a five-month period from a standing start, or considerably less if all that was involved was diverting product from elsewhere. That means that from June 2011, when Teva signalled its intention to launch an attack on the validity of the patent, one could expect other generic companies to be ready by November 2011. All the more, says Mr. Meade, given that the SPC was originally due to expire in November 2011, before the paediatric extension was granted. He relies on the evidence of a Mr. Tudor of Teva, given on the interim application, which confirms these periods, and also that generic companies would have had tentative plans to launch in November 2011.
Mr. Watson QC, submits, for Teva that there is a contrast between the expiry of the SPC when there is a free for all and a first instance order revoking the patent. Not every generic company would be prepared to launch before the Court of Appeal decision had been obtained. He therefore puts a case of urgency on the basis that there is a chance, albeit not a guarantee, that if the patent is revoked in November, then his client will enjoy a period of duopoly.
The principles upon which I should act are conveniently summarised by Warren J in CPC Group Limited and Qatari Diar Real Estate Investment Company [2009] EWHC, 3204 (Ch) as follows:
" The Law
83. Before expressing my conclusion on whether there should be an expedited trial, I should briefly mention the law.
84. In ( Wembley National Stadium v Wembley unreported, CA, 28 November 2000) Jonathan Parker LJ (with whom the other Lords Justice agreed) confirmed at paragraph 54 that 'the issue whether to grant expedition, and if so how much and on what terms, was a matter essentially for the discretion of the judge'. That case was a fairly clear case of urgency, concerning the rectification of a lease which if not rectified prevented work commencing on the new stadium for 2 years. The consequences of delay could have been disastrous and the trial would result in the final resolution of the dispute between the parties.
85. Like any discretion, that discretion must of course be exercised judicially. It is 'partly a question of principle and partly a question of practice': Daltel v Makki….Lloyd J at paragraph 11, a case where an expedited trial was not, in fact, ordered.
86. The general principle under the CPR is that cases are to be brought to court as soon as reasonably possible, consistently, of course, with the overriding objective: See Daltel at paragraph 12; to similar effect, see also Law Debenture Trust v Elektrim, Morgan J at paragraph 11.
87. The Court has a wider responsibility. It must also take into account 'the requirements of other litigants': See Elektrim at paragraph 11 and Daltel at paragraph 11. This is because
'Any order for expedition involves a disturbance of the normal procedure of a case to be got to trial. It involves giving preference to one case in the allocation of court time over other cases; it also involves requiring the lawyers on both sides to give preference to the tasks of preparation of a trial for that case as over tasks of a similar nature in relation to the affairs of other clients.'
This is an aspect which is of even more weight in relation to appeals to the Court of Appeal: See the remarks of Sir Thomas Bingham MR in Unilever plc v Chefaro Ltd. (Practice Note) [1995] 1 WLR 243, recognising that it was necessary to impose 'a high threshold which a party must cross before its application will be granted' because of the potential disruption and unfairness to other litigants caused by postponing their hearing until after the hearing in a matter which was commenced later.
88. The applicant must therefore satisfy the Court that there is an objective urgency to deciding the claim: See Daltel at paragraph 13.
89. The procedural history in any case is a relevant factor to take into account. Delay in seeking an order is a factor which may count against an applicant although it is not necessarily conclusive. Urgency, however, is a question for the court. The respondent's attitude is not really of importance. It is only if he can show some real prejudice to him if a trial is expedited that he has a part to play. Morgan...
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