Patents: interim injunctions

Summary

The High Court has refused to grant an interim injunction to restrain alleged patent infringement before trial where an expedited trial had been ordered, the defendant had undertaken to limit its marketing activities, and the patentee could not show irremediable damage.

Background

On an application for an interim injunction, the court will consider:

• Whether there is a serious question to be tried.
• If so, whether the balance of convenience is in favour of making the order (American Cyanamid Co v Ethicon Ltd [1975] AC 396).

While there is no obligation on a generic manufacturer to commence proceedings for revocation or a declaration of non-infringement of a potentially conflicting patent, if it does not clear the way to market when it must have realised that the patentee would be likely to seek an interim injunction if there was an arguable case of infringement, it risks falling on the wrong side of the balance of convenience (SmithKline Beecham Plc v Apotex Europe Ltd, www.practicallaw.com/9-203-1788).

Facts

A marketed a medical device used for treating a life-threatening heart condition. The market for the device in the UK was small compared with that in other countries, but this was due to change as a favourable decision from the NHS to fund the procedure was expected.

E was planning to launch its competing device in the UK in 2019. A had issued infringement proceedings and E counterclaimed alleging invalidity.

An expedited trial was ordered for December 2019. A applied for an interim injunction to prevent E from marketing its product in the UK before the trial.
E submitted evidence showing that it intended to roll out its device in a controlled manner to a small number of hospitals during 2019 and 2020, in order to obtain feedback from UK clinicians, and to promote its device, so as properly to compete with A's device when NHS funding was introduced. E gave an undertaking to limit its activity to ten patients at two hospitals.

A accepted that the expedited trial would limit the damage that it could suffer as there would be a court decision before E entered the market on a full commercial scale. However, A argued that irreparable harm would occur because E would bundle and cross-sell its device with other heart disease products, that E's activities would disrupt A's relationship with clinicians, and reputational damage to A.

E argued that damages would be an adequate remedy for A, whereas E would suffer irreparable harm as it would be unable to enter and compete with A in the expanding NHS-funded market if wrongly injuncted having not been able to obtain feedback from clinicians on its device.

Decision

The court refused A's application for an interim injunction.

There was a serious issue to be tried for the purposes of the American Cyanamid principles. The court did not consider the prior art and the validity of the patents or which device was clinically superior. If damages would be an adequate remedy for A, the court should…