Shire Pharmaceutical Contracts Ltd & Anor v Mount Sinai School of Medicine of New York University

Shire Pharmaceutical Contracts Ltd & Anor v Mount Sinai School of Medicine of New York University

The court ordered production of the samples for testing, finding no valid reason based on degradation or timing to refuse. The implied obligation not to use the samples for collateral purposes applies, but special circumstances exist due to parallel proceedings and fairness, warranting lifting the obligation to permit use of test results in the EPO.

Parties
Claimant/part 20 Defendant: Shire Pharmaceutical Contracts Limited; 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 for Production of Samples and Lifting of Implied Obligation
Outcome
Application granted; samples to be produced and implied obligation lifted for EPO use; costs reserved; permission to appeal refused.
Legal Topics
Disclosure of Samples, Implied Obligation, Collateral Use, Parallel Proceedings, Case Management
Intellectual Property Patent Law Disclosure of Samples Implied Obligation Collateral Use Parallel Proceedings Case Management

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 9 Party arguments 2
Sign in to unlock

Parties

Shire Pharmaceutical Contracts Limited

Claimant/part 20 Defendant

Mount Sinai School of Medicine of New York University

Defendant/part 20 Claimant

Procedural Posture

Patent Litigation / Interlocutory Application for Production of Samples and Lifting of Implied Obligation

Legal Issues

  1. 1 Should the court order production of alpha-galactosidase-A samples for testing?
  2. 2 Are the samples covered by an implied obligation not to use them for collateral purposes?
  3. 3 Should the implied obligation be lifted to allow use of test results in EPO proceedings?

Ratio Decidendi

The court ordered production of the samples for testing, finding no valid reason based on degradation or timing to refuse. The implied obligation not to use the samples for collateral purposes applies, but special circumstances exist due to parallel proceedings and fairness, warranting lifting the obligation to permit use of test results in the EPO.

Court Disposition

Application granted; samples to be produced and implied obligation lifted for EPO use; costs reserved; permission to appeal refused.

Orders

  • Samples of alpha-galactosidase-A to be delivered to Mount Sinai at Lexington premises by 12th December 2011.
  • Implied obligation not to use samples for collateral purposes is lifted for use in EPO proceedings.