Warner- Lambert Company LLC v Actavis Group PTC EHF & Ors

A Swiss form claim is a process claim. It cannot be treated as an EPC 2000 product claim, or as equivalent to one, for the purposes of indirect infringement. Where the law governing that issue is settled and the claim has no realistic prospect of success, it is wrong in principle to allow it to proceed to trial. A developing issue concerning the interpretation of the words for treating may justify allowing a different infringement claim to proceed so that the facts can first be established.

The claimant alleged infringement of a patent relating to the use of a pharmaceutical product. The court had already allowed the claim under section 60(1)(c) of the Patents Act 1977 to proceed to trial because the relevant law was developing.

This judgment determined whether the alternative claim under section 60(2) should also proceed. The central issue was whether that claim could be based on construing a Swiss form claim as a product claim, or as equivalent to a product claim.

1. Section 60(2) claim dismissed. The claimant’s claim under section 60(2) of the Patents Act 1977 was hopeless. It depended on construing a Swiss form claim as an EPC 2000 product claim, or as equivalent to one. That contention was contrary to settled domestic and EPO jurisprudence, including John Wyeth & Brother Ltd's Application [1985] RPC 545, Monsanto & Co. v Merck & Co. Inc. [2000] RPC 77, Actavis UK Ltd v Merck & Co. Inc. [2008] EWCA Civ 444 and Case T 1780/12 University of Texas Board of Regents/Cancer treatment [2014] EPOR 28.
2. The law applicable to section 60(2) was developed. Swiss form claims were treated as process claims, and the relevant mental element was addressed by the Court of Appeal in Grimme Maschinenfabrik GmbH & Co KG v Derek Scott (t/a Scotts Potato Machinery) [2010] EWCA Civ 1110 and KCI Licensing Inc v Smith & Nephew Plc & Others [2010] EWCA Civ 1260.
3. The Dutch decision in Novartis AG v Sun Pharmaceutical Industries (Europe) BV did not assist the claimant. The judge considered that it had been given without relevant argument on the point, or that the arguments had not registered with the court.
4. Although the section 60(1)(c) claim remained for trial because it concerned a developing area of law, it was wrong in principle to allow a claim with no realistic prospect of success to proceed. Costs were reserved.