Warner- Lambert Company LLC v Actavis Group PTC EHF & Ors

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 JohnWyeth& 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 1780/12 University 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 Monsantov 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 the section 60(1)(c) claim arises out of the proper interpretation of the words "for treating" in a Swiss form claim, and in particular the mental element which the word "for" imports. So far as section 60(2) is concerned, the law is in a developed state not only with regard to Swiss form claims being process claims, but also with regard to the mental element required, as a result of the decisions of the Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v Derek Scott(t/a Scotts Potato Machinery) [2010] EWCA Civ 1110, [2011] FSR 7 and KCI Licensing Inc v Smith & Nephew Plc & Others [2010] EWCA Civ 1260, [2011] FSR 8.

Thirdly, as can be seen from the judgment I handed down this morning, if it had not been for the judgment of the Dutch court in Novartis AG v Sun Pharmaceutical Industries (Europe) BV, it seems clear that Warner-Lambert would have abandoned this claim. Neither at the hearing before me between 13 and 15 January, nor at the hearing before me on 3 February 2015, did counsel for Warner-Lambert advance any developed submissions in relation to section 60(2). In both cases it was simply mentioned as an appendage to their main submissions on section 60(1)(c). For the reasons I have given in the judgment handed down this morning, it seems to me that the decision of the Dutch court provides Warner-Lambert with no assistance. I can only interpret the decision as one that was given in the absence of relevant argument on the point. Even if the arguments were raised, they do not seem to have registered with the court at all.

Finally, while I am not clear that eliminating this claim at this stage will make a practical difference in terms of the scope of the disclosure and evidence that will be required to prepare the case for trial, it seems to me that it is possible that it may have a limiting effect. Even if I am wrong about that and it has no limiting effect on the scope of the disclosure and the evidence, I accept the submission of counsel for Actavis that, as a matter of principle, it would be wrong to allow a claim which I cannot see ever succeeding to proceed to trial.

In my view the correct order as to costs in these circumstances is to reserve them. In many ways, the successful party has actually been Actavis. I have not been persuaded to change my view on the interpretation of the words "for treating" in a Swiss form claim. Furthermore, I have not been persuaded that Warner-Lambert's Amended Particulars of Infringement disclose reasonable grounds for alleging subjective intention on the part of Actavis. Yet further, I have granted summary judgment in respect of the claim under section 60(2). The only reason why I have nevertheless allowed the section 60(1)(c) case to go forward to trial is that this is a developing area of the law in which I have concluded that it would therefore be proper to find the facts first before attempting to establish definitively what the law is.

In those circumstances, it seems to me that reserving the costs will enable the court better to do justice between the parties.