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

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

The court has jurisdiction to order NHS England to issue guidance to CCGs and pharmacies regarding the prescribing of pregabalin by brand for pain, as this is the most effective, proportionate, and least onerous solution to protect Warner-Lambert’s patent rights, and the order contains appropriate safeguards. The cross-undertaking in damages must extend to the Actavis, Teva, and Dr Reddy’s groups of companies, as they may suffer loss as a result of the order.

Parties
Claimant: Warner-Lambert Company, LLC; Defendant: Actavis Group PTC EHF; Defendant: Actavis UK Limited; Defendant: Caduceus Pharma Limited; Respondent: National Health Service Commissioning Board (NHS England); Interested Party: Teva UK Limited; Interested Party: Generics (UK) Limited trading as Mylan; Interested Party: Dr Reddy’s Laboratories (UK) Limited; Interested Party: Consilient Health Limited; Interested Party: Sandoz Limited; Interested Party: Department of Health
Jurisdiction
England and Wales
Judgment Date
02 March 2015
Procedural Posture
Patent Infringement and Injunctive Relief Application / Interlocutory Application for Mandatory Injunction and Costs Order
Outcome
Application granted. Mandatory injunction issued. Costs awarded.
Legal Topics
Interim Injunctions, Mandatory Orders, Cross Undertaking in Damages, Jurisdiction of the Court, Proportionality of Remedies, Patent Enforcement, Public Law Duties in Private Proceedings
Intellectual Property Patent Law Civil Procedure Interim Injunctions Mandatory Orders Cross Undertaking in Damages Jurisdiction of the Court Proportionality of Remedies +2 more

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 5 Authorities cited 15 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Warner-Lambert Company, LLC

Claimant

Actavis Group PTC EHF

Defendant

Actavis UK Limited

Defendant

Caduceus Pharma Limited

Defendant

National Health Service Commissioning Board (NHS England)

Respondent

Teva UK Limited

Interested Party

Generics (UK) Limited trading as Mylan

Interested Party

Dr Reddy’s Laboratories (UK) Limited

Interested Party

Consilient Health Limited

Interested Party

Sandoz Limited

Interested Party

Department of Health

Interested Party

Procedural Posture

Patent Infringement and Injunctive Relief Application / Interlocutory Application for Mandatory Injunction and Costs Order

Legal Issues

  1. 1 Whether the court has jurisdiction to order NHS England to issue guidance to CCGs and pharmacies regarding prescribing pregabalin by brand for pain due to patent rights
  2. 2 Whether such an order is proportionate, does not create barriers to legitimate trade, and contains safeguards against abuse
  3. 3 Whether the cross-undertaking in damages should extend to the Actavis, Teva, and Dr Reddy’s groups of companies

Ratio Decidendi

The court has jurisdiction to order NHS England to issue guidance to CCGs and pharmacies regarding the prescribing of pregabalin by brand for pain, as this is the most effective, proportionate, and least onerous solution to protect Warner-Lambert’s patent rights, and the order contains appropriate safeguards. The cross-undertaking in damages must extend to the Actavis, Teva, and Dr Reddy’s groups of companies, as they may suffer loss as a result of the order.

Court Disposition

Application granted. Mandatory injunction issued. Costs awarded.

Orders

  • NHS England to issue guidance to all CCGs and NHS Business Services Authority by 4.00pm on 3 March 2015, requiring pregabalin to be prescribed by brand (Lyrica) for pain.
  • Liberty to apply for variation or setting aside of the guidance.