Actavis Group PTC EHF v Pharmacia LLC

Actavis Group PTC EHF v Pharmacia LLC

The stay was refused because, even with undertakings and likely expedition, EPO proceedings would take at least three years, while UK proceedings would resolve in two years, providing earlier commercial certainty in the UK market. The undertakings did not fully eliminate the chilling effect of potential future injunction and damages, and early UK resolution may promote settlement and serve the public interest in patent validity determination.

Parties
Claimant: Actavis Group PTC ehf; Defendant: Pharmacia LLC
Jurisdiction
England and Wales
Judgment Date
11 July 2014
Procedural Posture
Patent Revocation and Stay Application / Interlocutory Application for Stay Pending EPO Proceedings
Outcome
Application for stay refused
Legal Topics
Stay of Proceedings, Parallel EPO Opposition, Patent Validity, Commercial Certainty, Interim Undertakings
Intellectual Property Patent Law Stay of Proceedings Parallel EPO Opposition Patent Validity Commercial Certainty Interim Undertakings

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Parties

Actavis Group PTC ehf

Claimant

Pharmacia LLC

Defendant

Procedural Posture

Patent Revocation and Stay Application / Interlocutory Application for Stay Pending EPO Proceedings

Legal Issues

  1. 1 Whether to stay UK patent revocation proceedings pending EPO opposition outcome
  2. 2 Balance of justice between early national resolution and risk of wasted costs
  3. 3 Effect of undertakings on commercial certainty

Ratio Decidendi

The stay was refused because, even with undertakings and likely expedition, EPO proceedings would take at least three years, while UK proceedings would resolve in two years, providing earlier commercial certainty in the UK market. The undertakings did not fully eliminate the chilling effect of potential future injunction and damages, and early UK resolution may promote settlement and serve the public interest in patent validity determination.

Court Disposition

Application for stay refused

Orders

  • Proceedings not stayed on undertakings offered by Pharmacia; further argument to be heard on additional undertakings and costs.