UK Non-infringement Declarations — an unusual approach

Copyright Monday, May 8, 2006 Duncan Bucknell Company

On 2 May 2005, Mr Justice Pumfrey of the UK High Court (Patents Court) handed down this interesting interlocutory decision in Baxter v Abbott [2006] EWHC 919 (Pat).

Take home

This is the latest round of global litigation concerning Abbott’s Ultane (Sevoflurane) anaesthetic. The proceedings were commenced by Baxter for a Declaration of Non-Infringement in respect of Abbott’s patent EP (UK) 0 967 975. Abbott sought better particulars of Baxter’s Product and Process Description (‘PPD’). Mr Justice Pumfrey refused the application, stating in effect that Abbott had been in possession of the relevant information for some time (in an Abbreviated New Drug Application which they had neglected to show their own experts).

Comment

An unusual aspect of this case is that the patentee, Abbott has not counter-claimed for patent infringement. Instead, as Mr Justice Pumfrey has pointed out, the pleadings filed by Abbott (the Defendant in this case) merely state:

"The Defendants raise no positive case of infringement within this action. The burden is on the Claimants to prove non-infringement of claims 2 to 4 of the patent."

Thus, Abbott would presumably not be entitled to the remedies which would normally flow from a finding of infringement (such as an injunction or damages), and would be unable to later commence infringement proceedings in relation to the same product or process (due to Issue Estoppel or Res Judicata).

The question arises as to why Abbott have taken this course of action and Mr Justice Pumfrey’s comments on Abbott’s difficulty in proving infringement shed some light:

‘It is plain that Abbott have confronted difficulties in attempting to demonstrate that Baxter's sevoflurane is stabilised by water, and it is equally obvious from the emphasis on the epoxy lining to the aluminium container that every possible source of Lewis base has been investigated in the hope of demonstrating infringement. The difficulty is made still more clear by Abbott's steady refusal to make any assertion of infringement in the present proceedings, stating themselves content to rely upon the burden of proof.’

For a link to the IPKat’s article on this case from 3 May, click here.