Teva Pharma BV & Anor v Amgen, Inc & Anor

Under CPR rule 19.2, the court has a wide discretion to retain a party where that party may be affected by the determination, even if its legal interest in the patent has passed to another company. A claimant cannot retain a party merely to obtain disclosure, although disclosure may be a factor in the overall assessment. A potential financial interest does not by itself make a person a privy or justify retaining it. Where the claimant has a real prospect of obtaining declaratory relief against the former proprietor, it is desirable for that party to remain, particularly where it may be affected by future ownership, related patent proceedings or the use of findings in other litigation.

Teva brought revocation and supplementary protection certificate claims concerning European Patent (UK) No. 2 345 724 against Amgen, Inc. Although Amgen, Inc. had assigned the patent to Amgen Manufacturing Ltd, it remained the registered proprietor when the first two claims were commenced. Amgen applied under CPR rule 19.2 for Amgen Manufacturing Ltd to replace Amgen, Inc. and for Amgen, Inc. to cease to be a party. Amgen Manufacturing Ltd was added as a defendant. The issue was whether it was desirable for Amgen, Inc. to remain a party to the revocation, SPC and declaration of non-infringement claims.

1. Amgen’s application to remove Amgen, Inc. was dismissed. The claims had been properly brought against it because it was the registered proprietor when proceedings were commenced. Section 32(9) of the Patents Act 1977, rule 103 of the Patents Rules 2007, CPR rule 63.14(2)(a) and Practice Direction 63 paragraph 14.1 supported that conclusion.

2. CPR rule 19.2 confers a very wide power to add, retain or substitute parties where this is desirable to resolve the matters in dispute. The fact that the patent had been assigned, and that Amgen Manufacturing Ltd had been added, did not determine whether Amgen, Inc. should remain.

3. The court accepted that Amgen had structured ownership so as to minimise disclosure risk, but held that this did not itself make it desirable for a company with no current proprietary interest to remain a party. Nor was it legitimate to bring proceedings purely to obtain disclosure. Disclosure could be considered with other factors, but it was not significant here, particularly because its relevance and proportionality had not been determined and other routes might exist.

4. A potential royalty or other financial interest did not by itself make Amgen, Inc. a privy or justify retaining it. The decisive question was whether Teva had a real prospect of successfully obtaining declaratory relief against Amgen, Inc.

5. Applying the principles summarised in Rolls-Royce plc v Unite the Union [2009] EWCA Civ 387, the court held that ownership of the legal right was not determinative. Amgen, Inc. might be affected by the determination because it could procure a re-assignment, might pursue related patents, and might face reliance on findings or issue estoppels in other proceedings. The SPC provisions also raised an arguable question concerning entitlement where the patent had been assigned. It was therefore desirable for Amgen, Inc. to remain a party.