Warner-Lambert Company LLC v Sandoz GmbH & Anor (Rev 1) [2016] EWHC 3317 (Pat) (21 December 2016)

Warner-Lambert Company LLC v Sandoz GmbH & Anor (Rev 1) [2016] EWHC 3317 (Pat) (21 December 2016)

The court held that Warner-Lambert's change of position in not seeking to enforce claim 3 by injunction constitutes a material change in circumstances. This change enables Sandoz to argue that the interim injunction, now based only on the narrower claims 10, 11, and 12, is disproportionate. The court must therefore reconsider the balance of risk of injustice and the proportionality of the injunction in light of the current status of the patent claims and the ongoing appeal process.

Citation
[2016] EWHC 3317 (Pat)
Parties
Claimant: Warner-Lambert Company LLC; Defendant: Sandoz GmbH; Defendant: Sandoz Limited
Jurisdiction
England and Wales
Judgment Date
21 December 2016
Procedural Posture
Patent Interim Injunction Variation Application / Post Interim Injunction, Application to Vary Injunction Pending Appeal
Outcome
Application to vary the interim injunction granted in part; injunction varied to reflect the current valid claims and Warner-Lambert's position.
Legal Topics
Interim Injunctions, Second Medical Use Patents, Proportionality of Injunctive Relief, Pharmaceutical Regulation, Patent Infringement
Intellectual Property Patent Law Interim Injunctions Second Medical Use Patents Proportionality of Injunctive Relief Pharmaceutical Regulation Patent Infringement

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Parties

Warner-Lambert Company LLC

Claimant

Sandoz GmbH

Defendant

Sandoz Limited

Defendant

Procedural Posture

Patent Interim Injunction Variation Application / Post Interim Injunction, Application to Vary Injunction Pending Appeal

Legal Issues

  1. 1 Whether there has been a material change in circumstances justifying variation of the interim injunction against Sandoz
  2. 2 Whether the interim injunction should be maintained, varied, or discharged in light of the current status of the patent claims and ongoing appeals
  3. 3 Whether the scope of the injunction is proportionate and avoids creating barriers to legitimate trade

Ratio Decidendi

The court held that Warner-Lambert's change of position in not seeking to enforce claim 3 by injunction constitutes a material change in circumstances. This change enables Sandoz to argue that the interim injunction, now based only on the narrower claims 10, 11, and 12, is disproportionate. The court must therefore reconsider the balance of risk of injustice and the proportionality of the injunction in light of the current status of the patent claims and the ongoing appeal process.

Court Disposition

Application to vary the interim injunction granted in part; injunction varied to reflect the current valid claims and Warner-Lambert's position.

Orders

  • Paragraph 1 of the 17 November 2015 Order is amended to restrain Sandoz only in relation to pregabalin for use in the treatment of trigeminal neuralgia pain, acute herpetic and postherpetic pain, or causalgia pain, as covered by claims 10, 11, and 12.
  • Sandoz is permitted to market pregabalin for indications not covered by the valid claims, pending further order or the expiry of the patent.