Dr Reddy's Laboratories (UK) Limited & Ors v Warner-Lambert Company LLC

Dr Reddy's Laboratories (UK) Limited & Ors v Warner-Lambert Company LLC

The Court held that Warner-Lambert's proposed amendments had no real prospect of success because the monopoly conferred by a patent does not extend beyond acts of infringement, and it would not be unjust or inequitable to compensate Dr Reddy's and NHS Scotland for losses foreseeably caused by the injunction where no infringement occurred. Further, the attempt to raise infringement or illegality arguments at this stage was an abuse of process, as Warner-Lambert could and should have raised these issues in the liability phase prior to the Birss Order. The appeal was dismissed.

Parties
Claimant/respondent: Dr Reddy's Laboratories (UK) Limited; Claimant/respondent: Secretary of State for Health and Social Care; Claimant/respondent: The NHS Commissioning Board (NHS England); Claimant/respondent: The Welsh Ministers; Claimant/respondent: The Department of Health in Northern Ireland; Claimant/respondent: The Regional Health and Social Care Board (The Health and Social Care Board); Claimant/respondent: The Scottish Ministers; Claimant/respondent: Scottish Health Boards (8-21); Defendant/appellant: Warner-Lambert Company LLC
Jurisdiction
England and Wales
Judgment Date
01 February 2023
Procedural Posture
Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Cross Undertaking in Damages, Groundless Threats, Patent Infringement, Illegality Defence, Abuse of Process
Intellectual Property Patents Cross Undertaking in Damages Groundless Threats Patent Infringement Illegality Defence Abuse of Process

Case Brief

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Parties

Dr Reddy's Laboratories (UK) Limited

Claimant/respondent

Secretary of State for Health and Social Care

Claimant/respondent

The NHS Commissioning Board (NHS England)

Claimant/respondent

The Welsh Ministers

Claimant/respondent

The Department of Health in Northern Ireland

Claimant/respondent

The Regional Health and Social Care Board (The Health and Social Care Board)

Claimant/respondent

The Scottish Ministers

Claimant/respondent

Scottish Health Boards (8-21)

Claimant/respondent

Warner-Lambert Company LLC

Defendant/appellant

Procedural Posture

Civil Appeal / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether Warner-Lambert should be permitted to amend its Points of Defence to exclude damages relating to the Inflammatory Pain Claims from quantum calculation under cross-undertakings in damages and to plead that any profits arising from such sales should be excluded due to illegality (infringement of valid patent claims)
  2. 2 Whether the proposed amendments are an abuse of process under the Henderson v Henderson principle

Ratio Decidendi

The Court held that Warner-Lambert's proposed amendments had no real prospect of success because the monopoly conferred by a patent does not extend beyond acts of infringement, and it would not be unjust or inequitable to compensate Dr Reddy's and NHS Scotland for losses foreseeably caused by the injunction where no infringement occurred. Further, the attempt to raise infringement or illegality arguments at this stage was an abuse of process, as Warner-Lambert could and should have raised these issues in the liability phase prior to the Birss Order. The appeal was dismissed.

Court Disposition

Appeal dismissed

Orders

  • Permission to amend Points of Defence refused
  • No amendment to exclude damages or profits relating to Inflammatory Pain Claims from quantum calculation