Patents: injunctions and public interest in medical device cases

Background

Section 61(1) of the Patents Act 1977 (1977 Act) sets out remedies for patent infringement, which include injunctions restraining the defendant from any act of infringement.

The Intellectual Property Enforcement Directive (2004/48/EC) provides that remedies for infringement of patents and other intellectual property rights must be just and equitable, and also effective, proportionate and dissuasive.

Under the Senior Courts Act 1981, the court has the power to grant an injunction, where it is just and convenient, which may be made unconditionally or conditionally, or damages in lieu of an injunction.

In Shelfer v City of London Electric Lighting Co, the High Court held damages could only be awarded in lieu of an injunction where:

• The injury to the plaintiff was small and could be adequately compensated by a small money payment.
  
  
• Damages were capable of being estimated in money.
  
  
• It would be oppressive to the defendant to grant an injunction ([1895] 1 Ch 287).

In Chiron v Organon No 10, the High Court considered the protection of the public interest in the context of patents when an infringer was seeking to invoke that public interest as a reason to withhold an injunction, and held that the infringer was effectively seeking to obtain a compulsory licence without having established the grounds set out in the 1977 Act ([1995] FSR 325).

Facts

A marketed a medical device. E planned to launch a competing device. Both A's and E's products operated in essentially the same way and were the only devices of this type currently approved for use in Europe.

A issued patent infringement proceedings and E counterclaimed alleging invalidity.

The Patents Court refused to grant an interim injunction because an expedited trial had been ordered and E had agreed to distribute only a small specified quantity of its devices before the outcome of the trial (www.practicallaw.com/w-020-9368).

At trial, the Patents Court held that E had infringed two patents.

A argued that an injunction should be granted with the sole qualification that E's product could be supplied where A's product had been unsuccessful and a doctor reasonably believed it would be appropriate to try E's product instead.

E argued that no injunction should be granted because this would be against the public interest, or alternatively that any injunction should include an exception for the use of E's product for patients with certain medical conditions. E proposed a mechanism for doctors to make a declaration about those circumstances in order to be permitted to be supplied with E's device.

Decision

The court granted an injunction in the terms requested by A.

A general injunction to restrain future infringements was the normal remedy for the patentee. The burden was on E to give reasons why such an injunction should not be granted. All the circumstances ought to be considered. The public interest, such as the impact on third parties, was a relevant consideration. Public interest might justify refusal of or a carve-out from an injunction, and an award of damages in lieu. Smallness of the damages in lieu was not determinative. Even if the damages were a large sum of money or were difficult to calculate, it might still be in the public interest to refuse an injunction…