UK Non-infringement Declarations — an unusual approach

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).


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:

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

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.

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