The Patent Review 2013 - 2014: Damages on a Cross-Undertaking: AstraZeneca AB & Anor v KRKA, d.d Novo Mesto and Consilient Health Limited

15 April 2015

Neil Jenkins, Audrey Horton

There have been several decisions over the past few years dealing with various issues arising on a cross-undertaking in damages given as a pre-requisite to the grant of an interim injunction.

The nature of an illegality defence to a claim on a cross-undertaking.

AstraZeneca AB & Anor v KRKA, d.d Novo Mesto and Consilient Health Limited [2014] EWHC 84 (Pat), Sales J.

The interim injunction in question had been ordered against Consilient back in 2010 preventing them from marketing a generic version of A-Z's proton pump inhibitor sold under the brand name Nexium. As a result of A-Z subsequently losing an infringement action commenced against Ranbaxy on the same patent, they concluded that they would not win the action on the same patent against Consilient and applied to have the injunction discharged.

The Judgment is of interest insofar as the Judge had to consider the merits of the various approaches that could be used in trying to determine the damage caused by the lost opportunity to enter a pharmaceutical market.

The Judgment is also of interest insofar as the Judge relied heavily on the evidence about the decisions that Primary Care Trust Medicine Managers would have made when considering recommending the change from an originator product to a branded generic product. By contrast, the Judge was fairly dismissive of the evidence from the experts on how the market for a pharmaceutical behaves upon generic entry.
Appeal part heard in February 2015.