Merck Sharp Dohme Corp & Anor v Teva Pharma BV & Anor

Merck Sharp Dohme Corp & Anor v Teva Pharma BV & Anor

The combination of Teva's obtaining a marketing authorisation for generic efavirenz nearly two years before patent expiry, the absence of any specific explanation for such early authorisation, and Teva's refusal to state their intentions or provide undertakings, provides a sufficient basis to infer a threat and intention to infringe. Therefore, the claim should not be struck out and an interim injunction is justified to restrain threatened infringement pending trial.

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 Relief and Strike Out Applications) / Interim Application Ruling
Outcome
Claim not struck out; interim injunction granted
Legal Topics
Quia Timet Injunctions, Interim Injunctions, Patent Infringement, Strike Out Applications, Balance of Convenience
Intellectual Property Patents Civil Procedure Quia Timet Injunctions Interim Injunctions Patent Infringement Strike Out Applications Balance of Convenience

Case Brief

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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 Relief and Strike Out Applications) / Interim Application Ruling

Legal Issues

  1. 1 Whether the claimants have reasonable grounds for a quia timet injunction to restrain threatened patent infringement
  2. 2 Whether the defendants' application to strike out the claim should be granted for lack of reasonable grounds
  3. 3 Whether interim injunctive relief should be granted pending trial

Ratio Decidendi

The combination of Teva's obtaining a marketing authorisation for generic efavirenz nearly two years before patent expiry, the absence of any specific explanation for such early authorisation, and Teva's refusal to state their intentions or provide undertakings, provides a sufficient basis to infer a threat and intention to infringe. Therefore, the claim should not be struck out and an interim injunction is justified to restrain threatened infringement pending trial.

Court Disposition

Claim not struck out; interim injunction granted

Orders

  • Teva is restrained by interim injunction from infringing European Patent (UK) No. 0,582,455 by selling or marketing Efavirenz Teva in the UK pending trial, supported by a cross-undertaking in damages from BMS.