Glaxosmithkline UK Ltd v Wyeth Holdings LLC [2017] EWHC 91 (Pat) (13 January 2017)

Glaxosmithkline UK Ltd v Wyeth Holdings LLC [2017] EWHC 91 (Pat) (13 January 2017)

Pfizer cannot claim an account of profits for future infringements in lieu of an injunction because such relief was not pleaded and would take GSK UK by surprise; even if it were open, the court would not exercise its discretion to allow it due to the public health context and lack of unconscionable conduct. Pfizer is entitled to elect between an account of profits and damages inquiry for past infringements, as previously ordered, but only a damages inquiry is available for future infringements.

Citation
[2017] EWHC 91 (Pat)
Parties
Claimant: GlaxoSmithKline UK Limited; Defendant: Wyeth Holdings LLC
Jurisdiction
England and Wales
Judgment Date
13 January 2017
Procedural Posture
Patent Infringement and Remedies Application / Post Liability Trial, Preliminary Issues on Remedies
Outcome
Application for account of profits for future infringements refused; Pfizer permitted to elect between account of profits and damages for past infringements; only damages inquiry available for future infringements; GSK awarded costs of disclosure applications; no order as to costs on account of profits issues.
Legal Topics
Account of Profits, Damages Inquiry, Pleadings Amendment, Discretionary Relief, Disclosure Obligations
Intellectual Property Patents Account of Profits Damages Inquiry Pleadings Amendment Discretionary Relief Disclosure Obligations

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 4 Party arguments 2
Sign in to unlock

Parties

GlaxoSmithKline UK Limited

Claimant

Wyeth Holdings LLC

Defendant

Procedural Posture

Patent Infringement and Remedies Application / Post Liability Trial, Preliminary Issues on Remedies

Legal Issues

  1. 1 Whether Pfizer can claim an account of profits for future infringements in lieu of an injunction
  2. 2 Whether Pfizer's pleadings permit an account of profits for future infringements
  3. 3 Whether the court should exercise discretion to allow an account of profits for past or future infringements

Ratio Decidendi

Pfizer cannot claim an account of profits for future infringements in lieu of an injunction because such relief was not pleaded and would take GSK UK by surprise; even if it were open, the court would not exercise its discretion to allow it due to the public health context and lack of unconscionable conduct. Pfizer is entitled to elect between an account of profits and damages inquiry for past infringements, as previously ordered, but only a damages inquiry is available for future infringements.

Court Disposition

Application for account of profits for future infringements refused; Pfizer permitted to elect between account of profits and damages for past infringements; only damages inquiry available for future infringements; GSK awarded costs of disclosure applications; no order as to costs on account of profits issues.

Orders

  • Pfizer may elect between an account of profits and a damages inquiry for past infringements.
  • Pfizer's application for an account of profits for future infringements is refused.