Pfizer Ltd v F. Hoffmann-La Roche AG & Anor [2019] EWHC 1520 (Pat) (20 June 2019)

Pfizer Ltd v F. Hoffmann-La Roche AG & Anor [2019] EWHC 1520 (Pat) (20 June 2019)

The court held that, following Roche's de-designation of the UK from all relevant patent applications, there were and would be no relevant UK patent rights at issue. The only purpose of the Arrow declarations sought by Pfizer was their potential persuasive effect in foreign jurisdictions, particularly Belgium. The court found that this was not a sufficient useful purpose to justify the exercise of its discretion to grant declaratory relief in the absence of any UK legal dispute or commercial uncertainty. Accordingly, the declarations were refused.

Citation
[2019] EWHC 1520 (Pat)
Parties
Claimant: Pfizer Limited; Defendant: F. Hoffmann-La Roche AG; Defendant: Roche Products Limited
Jurisdiction
England and Wales
Judgment Date
20 June 2019
Procedural Posture
Patents Arrow Declaration / Judgment After Trial
Outcome
Claim dismissed
Legal Topics
Arrow Declarations, Biosimilars, Patent Thickets, Declaratory Relief, Obviousness, Novelty, Supplementary Protection Certificates, Jurisdiction of UK Courts, Cross Border Patent Litigation
Intellectual Property Patents Arrow Declarations Biosimilars Patent Thickets Declaratory Relief Obviousness Novelty +3 more

Case Brief

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Parties

Pfizer Limited

Claimant

F. Hoffmann-La Roche AG

Defendant

Roche Products Limited

Defendant

Procedural Posture

Patents Arrow Declaration / Judgment After Trial

Legal Issues

  1. 1 Whether the UK court should grant Arrow declarations in the absence of any relevant UK patent rights due to de-designation by Roche.
  2. 2 Whether the declarations would serve a useful purpose, particularly in relation to commercial uncertainty and potential impact in foreign jurisdictions such as Belgium.
  3. 3 Whether Roche's conduct in patent prosecution constitutes 'shielding' to prolong commercial uncertainty for Pfizer's biosimilar launch.

Ratio Decidendi

The court held that, following Roche's de-designation of the UK from all relevant patent applications, there were and would be no relevant UK patent rights at issue. The only purpose of the Arrow declarations sought by Pfizer was their potential persuasive effect in foreign jurisdictions, particularly Belgium. The court found that this was not a sufficient useful purpose to justify the exercise of its discretion to grant declaratory relief in the absence of any UK legal dispute or commercial uncertainty. Accordingly, the declarations were refused.

Court Disposition

Claim dismissed

Orders

  • The claim for Arrow declarations is refused.
  • No declarations are granted.