Merck Sharp Dohme Corp & Anor v Teva Pharma BV & Anor [2012] EWHC 627 (Pat) (15 March 2012)

Merck Sharp Dohme Corp & Anor v Teva Pharma BV & Anor [2012] EWHC 627 (Pat) (15 March 2012)

The combination of Teva obtaining a marketing authorisation for generic efavirenz 22 months before expiry of BMS's patent/SPC, coupled with refusal to provide undertakings or disclose intentions, provides a concrete basis for inferring a threat and intention to infringe. The action is properly constituted and should...

Source-derived case information.

Citation
[2012] EWHC 627 (Pat)
Parties
Claimant: Merck Sharp Dohme Corp.; Claimant: Bristol-Myers Squibb Pharmaceuticals Limited; Defendant: Teva Pharma B. V.; Defendant: Teva UK Limited
Jurisdiction
England and Wales
Judgment Date
15 March 2012
Procedural Posture
Patent Infringement (interim Injunction and Strike Out Applications) / Interim Application Pre Trial
Outcome
Strike out application refused; interim injunction granted.
Legal Topics
Patent Infringement, Interim Injunctions, Quia Timet Actions, Strike Out Applications, Supplementary Protection Certificates
Intellectual Property Pharmaceutical Law Patent Infringement Interim Injunctions Quia Timet Actions Strike Out Applications Supplementary Protection Certificates

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Summary, issues, holding and outcome

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Parties

Merck Sharp Dohme Corp.

Claimant

Bristol-Myers Squibb Pharmaceuticals Limited

Claimant

Teva Pharma B. V.

Defendant

Teva UK Limited

Defendant

Procedural Posture

Patent Infringement (interim Injunction and Strike Out Applications) / Interim Application Pre Trial

Legal Issues

  1. 1 Whether claimants have reasonable grounds for quia timet patent infringement action
  2. 2 Whether obtaining a marketing authorisation plus refusal to disclose launch plans constitutes a threat to infringe
  3. 3 Whether interim injunction should be granted pending trial

Ratio Decidendi

The combination of Teva obtaining a marketing authorisation for generic efavirenz 22 months before expiry of BMS's patent/SPC, coupled with refusal to provide undertakings or disclose intentions, provides a concrete basis for inferring a threat and intention to infringe. The action is properly constituted and should not be struck out. Interim injunction is justified to restrain sale pending trial due to risk of irremediable harm.

Court Disposition

Strike out application refused; interim injunction granted.

Orders

  • Interim injunction granted restraining sale of Efavirenz Teva pending trial, supported by cross-undertaking in damages from BMS.
  • Proceedings to continue; Teva obliged to plead intentions in Defence.