Merck Sharp & Dohme Ltd v Glaxosmithkline Biologicals SA

Merck Sharp & Dohme Ltd v Glaxosmithkline Biologicals SA

GSK must use best endeavours to narrow independently valid claims before PPD but may amend after PPD; disclosure regarding prior use defence is premature until pleaded; it is not necessary for all GSK legal team/support staff to sign confidentiality undertakings if the firm accepts responsibility; GSK is not restrained from using confidential information for amending patent claims beyond CPR 31.22.

Parties
Claimant/part 20 Defendant: Merck Sharp & Dohme Limited; Defendant/part 20 Claimant: GlaxoSmithKline Biologicals S.A.
Jurisdiction
England and Wales
Judgment Date
30 November 2018
Procedural Posture
Patent Litigation / Case Management Conference (cmc) and Interlocutory Applications
Outcome
Interlocutory orders made; applications by both parties allowed in part and refused in part.
Legal Topics
Patents, Confidentiality Agreements, Disclosure, Prior Use Defence, Amendment of Patent Claims
Intellectual Property Law Patents Confidentiality Agreements Disclosure Prior Use Defence Amendment of Patent Claims

Case Brief

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Parties

Merck Sharp & Dohme Limited

Claimant/part 20 Defendant

GlaxoSmithKline Biologicals S.A.

Defendant/part 20 Claimant

Procedural Posture

Patent Litigation / Case Management Conference (cmc) and Interlocutory Applications

Legal Issues

  1. 1 Timing of identification of independently valid patent claims relative to product and process description (PPD)
  2. 2 Appropriateness and timing of disclosure orders regarding prior use defence
  3. 3 Scope and signatories of confidentiality undertakings

Ratio Decidendi

GSK must use best endeavours to narrow independently valid claims before PPD but may amend after PPD; disclosure regarding prior use defence is premature until pleaded; it is not necessary for all GSK legal team/support staff to sign confidentiality undertakings if the firm accepts responsibility; GSK is not restrained from using confidential information for amending patent claims beyond CPR 31.22.

Court Disposition

Interlocutory orders made; applications by both parties allowed in part and refused in part.

Orders

  • GSK to use best endeavours to narrow list of independently valid claims before PPD, with liberty to amend after PPD.
  • MSD to decide on pleading prior use defence within 28 days; no disclosure order until defence is pleaded.