Dr Reddy’s Laboratories & others v Warner-Lambert Company LLC [2023] EWCA Civ 73
In the latest instalment in the fallout from the pregabalin litigation, Warner-Lambert had sought to amend its case on the damages inquiry to introduce an attempt to reduce the damages payable upon their cross-undertaking by arguing that Dr Reddy’s should not be entitled to recover the profits it would have made on the proportion of its lost sales of skinny-label pregabalin that would have been used by patients for the treatment of inflammatory pain. Warner-Lambert put its case on two bases:
(1) An ex-turpi causa argument that such sales would have involved an infringement by pharmacists, pursuant to sections 60(1)(b) and/or 60(2) of the 1977 Act, of those claims of the patent which related to inflammatory pain and which were not declared invalid during the liability phase.
(2) A contention that such sales, even if they would not have involved any infringement of the patent, would nevertheless have been enabled by the second medical use disclosed by Warner-Lambert in the patent such that it would be unjust and inequitable for Warner-Lambert to have to pay compensation in respect of those sales. This argument was prefaced on the proposition that the grant of a patent confers upon the patentee, in addition to the right to bring claims for infringement, a non-statutory monopoly over the inventive concept disclosed in the patent.
At first instance, the Judge had rejected the first argument inter alia on the grounds of abuse of process, and the second argument on the basis that there was no monopoly beyond the confines of the statute.
The Court of Appeal unanimously upheld the Judge’s conclusion on the first argument. In addition, Arnold and Nugee LJJ found that the claims of infringement by pharmacists had no realistic prospect of succeeding. Males LJ expressed “grave reservations” about the viability of the infringement case, but elected not to decide the appeal on that ground.
The second argument was unanimously rejected by the Court of Appeal, which confirmed that a patent confers no monopoly in respect of acts which do not infringe it.
Brian Nicholson KC and Christopher Hall represented Dr Reddy’s.