Actavis Group PTC EHF & Anor v Pharmacia LLC

When deciding whether to stay patent proceedings pending parallel European Patent Office proceedings, the court must assess the overall balance of competing considerations. Relevant factors include commercial uncertainty, the likely duration of the stay, the parties’ interests in an early domestic decision, prospects of settlement, and the adequacy of undertakings addressing prejudice during the stay. Additional undertakings may alter the balance where they substantially remove the commercial uncertainty faced by the party resisting the stay.

Pharmacia renewed its application for a stay of patent proceedings pending final determination of parallel opposition proceedings before the European Patent Office. A stay had previously been refused in [2014] EWHC 2265 (Pat) because Pharmacia’s original undertakings did not address the risk that Actavis might later be removed from the market and face damages or an account of profits.

Pharmacia offered additional undertakings. Actavis continued to oppose the stay, relying on the importance of an early English decision for its intended European launch, settlement prospects, and scrutiny of the patent’s validity. The central issue was whether the revised undertakings changed the overall balance.

1. Stay granted. The proceedings were stayed on the basis of Pharmacia’s undertakings, as set out in its solicitors’ letter of 23 July 2014 and clarified in court.
2. The court applied the guidance of the Court of Appeal in IPCom GmbH v HTC Europe Co Ltd [2013] EWCA Civ 1496, [2014] RPC 12, at paragraph 68. The relevant considerations had to be assessed together and the court had to determine the overall balance.
3. The additional undertakings substantially eliminated the commercial uncertainty to which Actavis would be exposed in the United Kingdom during a stay. In particular, they addressed the earlier concern about a possible future injunction and liability for ordinary damages or an account of profits.
4. Actavis had legitimate reasons for seeking an early English judgment. Such a judgment could assist its European launch, provide confidence to it and its customers, and promote settlement. Those considerations favoured refusal, but were outweighed by the additional undertakings and the other factors identified in IPCom GmbH v HTC Europe Co Ltd.
5. The court acknowledged uncertainty about whether the EPO would expedite the opposition proceedings where Pharmacia undertook not to seek a United Kingdom injunction. It nevertheless expressed the view that expedition was warranted by the strong likelihood of further European proceedings, including infringement proceedings in EPC contracting states.

This was a renewed first-instance application. The court had previously refused a stay in [2014] EWHC 2265 (Pat), but granted the renewed application on the basis of the additional undertakings.