Dr Reddy's Laboratories (UK) Ltd & Ors v Warner-Lambert Company LLC & Anor [2021] EWHC 2182 (Ch) (30 July 2021)

Dr Reddy's Laboratories (UK) Ltd & Ors v Warner-Lambert Company LLC & Anor [2021] EWHC 2182 (Ch) (30 July 2021)

The court held that, when assessing damages under cross-undertakings or threats in the context of multiple claimants and orders relating to the same patent in a finite market, the counterfactual must remove only the specific order, undertaking, or threat that is alleged to have caused loss. It is not correct to assume that all parties knew the patent was invalid at all relevant times, nor to apply a single consistent counterfactual across all claims unless causally justified. Losses recoverable are strictly those caused by the specific order, not by the existence of the patent or the litigation.

Citation
[2021] EWHC 2182 (Ch)
Parties
Inquiry Claimant: Dr Reddy's Laboratories (UK) Limited; Inquiry Claimant: Actavis Group PTC EHF; Inquiry Claimant: Accord-UK Limited (formerly Actavis UK Limited); Inquiry Claimant: Balkanpharma Dupnitsa AD; Inquiry Claimant: Actavis International Limited; Inquiry Claimant: Secretary of State for Health and Social Care; Inquiry Claimant: NHS England; Inquiry Claimant: The Welsh Ministers; Inquiry Claimant: The Department of Health, Social Services and Public Safety for Northern Ireland; Inquiry Claimant: The Regional Health and Social Care Board; Inquiry Claimant: The Scottish Ministers; Inquiry Claimant: The Scottish Health Boards; Inquiry Claimant: Ranbaxy (UK) Limited; Inquiry Claimant: Sandoz GmbH; Inquiry Claimant: Sandoz Limited; Inquiry Claimant: Sandoz AG; Inquiry Claimant: Hexal AG; Inquiry Claimant: Teva UK Limited; Inquiry Claimant: Pliva Hrvatska D.O.O.; Inquiry Claimant: Teva API India Private Limited; Inquiry Claimant: Teva Operations Poland SP Z. O. O.; Inquiry Claimant: Plus Chemicals, Branch of Teva Pharmaceuticals International GmbH; Inquiry Defendant: Warner-Lambert Company LLC; Inquiry Defendant: Pfizer Limited
Jurisdiction
England and Wales
Judgment Date
30 July 2021
Procedural Posture
Patents/intellectual Property Preliminary Issues / Judgment on Preliminary Issues Regarding Counterfactual Assumptions for Damages Assessment
Outcome
Preliminary issues determined; guidance given for damages assessment; no final damages awarded at this stage.
Legal Topics
Cross Undertakings in Damages, Interlocutory Injunctions, Patent Threats, Counterfactual Analysis, Damages Assessment, Market Entry of Generics, Patent Invalidity, Section 70 Patents Act 1977
Intellectual Property Patents Pharmaceutical Law Cross Undertakings in Damages Interlocutory Injunctions Patent Threats Counterfactual Analysis Damages Assessment +3 more

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Parties

Dr Reddy's Laboratories (UK) Limited

Inquiry Claimant

Actavis Group PTC EHF

Inquiry Claimant

Accord-UK Limited (formerly Actavis UK Limited)

Inquiry Claimant

Balkanpharma Dupnitsa AD

Inquiry Claimant

Actavis International Limited

Inquiry Claimant

Secretary of State for Health and Social Care

Inquiry Claimant

NHS England

Inquiry Claimant

The Welsh Ministers

Inquiry Claimant

The Department of Health, Social Services and Public Safety for Northern Ireland

Inquiry Claimant

The Regional Health and Social Care Board

Inquiry Claimant

The Scottish Ministers

Inquiry Claimant

The Scottish Health Boards

Inquiry Claimant

Ranbaxy (UK) Limited

Inquiry Claimant

Sandoz GmbH

Inquiry Claimant

Sandoz Limited

Inquiry Claimant

Sandoz AG

Inquiry Claimant

Hexal AG

Inquiry Claimant

Teva UK Limited

Inquiry Claimant

Pliva Hrvatska D.O.O.

Inquiry Claimant

Teva API India Private Limited

Inquiry Claimant

Teva Operations Poland SP Z. O. O.

Inquiry Claimant

Plus Chemicals, Branch of Teva Pharmaceuticals International GmbH

Inquiry Claimant

Warner-Lambert Company LLC

Inquiry Defendant

Pfizer Limited

Inquiry Defendant

Procedural Posture

Patents/intellectual Property Preliminary Issues / Judgment on Preliminary Issues Regarding Counterfactual Assumptions for Damages Assessment

Legal Issues

  1. 1 What counterfactual assumptions should be made when assessing damages under cross-undertakings and threats in a finite pharmaceutical market with multiple claimants and orders?
  2. 2 Should the assessment assume knowledge of patent invalidity at all relevant times?
  3. 3 Should a single consistent counterfactual be applied across all claims or separate counterfactuals for each?

Ratio Decidendi

The court held that, when assessing damages under cross-undertakings or threats in the context of multiple claimants and orders relating to the same patent in a finite market, the counterfactual must remove only the specific order, undertaking, or threat that is alleged to have caused loss. It is not correct to assume that all parties knew the patent was invalid at all relevant times, nor to apply a single consistent counterfactual across all claims unless causally justified. Losses recoverable are strictly those caused by the specific order, not by the existence of the patent or the litigation.

Court Disposition

Preliminary issues determined; guidance given for damages assessment; no final damages awarded at this stage.

Orders

  • Assumption that all parties knew the patent was invalid at all relevant times is rejected.
  • Counterfactual for each claim must remove only the specific order, undertaking, or threat alleged to have caused loss.