Shire Pharmaceutical Contracts Ltd & Anor v Mount Sinai School of Medicine of New York University [2011] EWHC 3492 (Pat) (06 December 2011)

Shire Pharmaceutical Contracts Ltd & Anor v Mount Sinai School of Medicine of New York University [2011] EWHC 3492 (Pat) (06 December 2011)

The court ordered production of the samples because they were relevant to the issues, not privileged, and necessary for Mount Sinai to understand and respond to the experiments deployed against them. The implied obligation restricting collateral use applies, but special circumstances exist—namely, Shire's own deployment of the experiments in both UK and EPO proceedings and the lack of confidentiality—justifying lifting the obligation to permit use of the results in the EPO.

Citation
[2011] EWHC 3492 (Pat)
Parties
Claimant/part 20 Defendants: Shire Pharmaceutical Contracts Limited and another; Defendant/part 20 Claimant: Mount Sinai School of Medicine of New York University
Jurisdiction
England and Wales
Judgment Date
06 December 2011
Procedural Posture
Patent Litigation (interlocutory Application) / Pre Trial, Application for Production of Samples and Collateral Use Order
Outcome
Application granted in part
Legal Topics
Patent Infringement, Patent Validity, Disclosure of Evidence, Collateral Use of Disclosed Material, Case Management
Intellectual Property Civil Procedure Patent Infringement Patent Validity Disclosure of Evidence Collateral Use of Disclosed Material Case Management

Case Brief

Summary, issues, holding and outcome

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Parties

Shire Pharmaceutical Contracts Limited and another

Claimant/part 20 Defendants

Mount Sinai School of Medicine of New York University

Defendant/part 20 Claimant

Procedural Posture

Patent Litigation (interlocutory Application) / Pre Trial, Application for Production of Samples and Collateral Use Order

Legal Issues

  1. 1 Whether to order production of samples of alpha-galactosidase-A for testing
  2. 2 Whether an implied obligation restricts collateral use of samples/results outside these proceedings
  3. 3 Whether special circumstances justify lifting the implied obligation to allow use in EPO proceedings

Ratio Decidendi

The court ordered production of the samples because they were relevant to the issues, not privileged, and necessary for Mount Sinai to understand and respond to the experiments deployed against them. The implied obligation restricting collateral use applies, but special circumstances exist—namely, Shire's own deployment of the experiments in both UK and EPO proceedings and the lack of confidentiality—justifying lifting the obligation to permit use of the results in the EPO.

Court Disposition

Application granted in part

Orders

  • Order for production of samples of alpha-galactosidase-A to Mount Sinai for testing
  • Implied obligation restricting collateral use lifted to permit use of test results in EPO proceedings