Hospira UK Ltd v Eli Lilly & Company

An injunction restraining the commencement of future proceedings is an exceptional protection against abuse of the court’s process. It should be exercised cautiously and requires a present basis for concluding that the proposed proceedings would be abusive or have no realistic prospect of success. A party’s reservation of its right to sue, where future facts remain uncertain, is insufficient. The proper time to assess good faith, prospects and abuse is ordinarily when the proceedings are issued. A declaration of non-infringement does not immunise future manufacture or sale: infringement remains dependent on the process actually used.

Hospira sought permission to amend its particulars of claim and an injunction restraining Eli Lilly from commencing infringement proceedings concerning gemcitabine made according to a disclosed manufacturing process. Lilly accepted that manufacture according to the process description did not infringe the patent, but reserved its position concerning future imports and sales.

The application was prompted by Hospira’s concern that proceedings, possibly accompanied by interim relief, would be brought shortly before launch. The central issue was whether there was a present basis for restraining Lilly from commencing future proceedings as an abuse of the court’s process.

1. Application dismissed. Permission to advance the proposed amendment was refused, and Hospira’s application for an injunction restraining the commencement of infringement proceedings was dismissed.
2. The court has an inherent jurisdiction to restrain the commencement of proceedings in order to protect its process from abuse. That jurisdiction is exceptional and must be exercised cautiously. The categories of case are not closed, but the jurisdiction is not a general means of obtaining advance protection from litigation.
3. The evidence showed that Lilly had no present basis for believing that Hospira’s product would be made by an infringing process. However, Lilly had merely reserved its right to bring proceedings. Since the relevant future events had not occurred, it could not presently be established that any proceedings later brought would be abusive.
4. The proper time to assess whether future infringement proceedings are brought in good faith, have no realistic prospect of success, or constitute an abuse is when they are brought. The declaration of non-infringement did not prevent Lilly from commencing proceedings if it later had a proper basis. Any issue would first concern whether the imported product was made according to the disclosed process.
5. The court warned that, absent a material change in circumstances, an allegation that a different process was being used could amount to an allegation of fraud against Hospira or its suppliers. Lilly could not wait without acting and then expect the court to grant interim relief at launch. The warning did not, however, justify an injunction in advance.
6. Hospira was ordered to pay the costs of the application, assessed at £50,000. Confidential documents referred to in the proceedings were to remain confidential, and the parties had liberty to apply for a final order.