Neurim v Mylan [2022] EWHC 109 (Pat)
In these proceedings, Neurim alleges that Mylan infringe European Patent (UK) 3,103,443 (the Divisional). In previous proceedings, started in 2020 (the 2020 Action), Neurim sued Mylan for infringement of European Patent (UK) 1,441,702 (the Parent of the Divisional). The Patents concern melatonin for use in treating a primary insomnia characterised by non-restorative sleep (NRS). In his judgment in the 2020 Action (the Judgment), Marcus Smith J held that the Parent was valid and Infringed. On 18 December 2020, Neurim withdrew its appeal to the Technical Board of Appeal (TBA of the EPO) from the Opposition Division’s decision that the Parent was invalid. So, the Parent was revoked ab initio. However, Neurim had the Divisional in prosecution, and obtained its grant on 30 June 2021, whereupon it began these proceedings. Neurim applied to amend the claims of the Divisional into a form identical for practical purposes to the claims of the Parent. Neurim alleged that issue estoppel arising from the Judgment prevented Mylan from challenging the validity of the Divisional. Mylan said that Neurim’s conduct in amending the Divisional was an abuse of process, and it said that Neurim’s conduct in seeking to shut out its challenge to the validity of the Divisional was an abuse of a dominant position under s. 18 of the Competition Act 1998.
The preliminary issues were therefore:
- i) Whether Mylan was issue estopped from challenging the validity of the Divisional in the light of the 2020 action.
- ii) Whether Neurim’s conduct in amending the Divisional was an abuse.
iii) Whether Neurim’s conduct amounts to an abuse of a dominant position (on the assumption of dominance and market definition).
Meade J heard the trial in person between 15-17 December 2021 and 19 January 2022. The Judge agreed with Mylan that there was no issue estoppel and directed that submissions be made to Marcus Smith J in relation to the validity of the Divisional Patent. He held that there was no abuse and the competition issue did not need to be determined, given his decision on issue estoppel.
Piers Acland QC and Adam Gamsa appeared for Mylan, instructed by Taylor Wessing LLP