Regeneron Pharmaceuticals, Inc v Kymab Ltd & Anor

In framing post-judgment relief in a patent infringement case, the court may grant remedies needed to make an injunction effective, including delivery up or destruction of articles used to facilitate further infringement. Relief must remain necessary and proportionate to protecting the claimant’s domestic patent rights. Disclosure may be ordered for infringing products disposed of in the jurisdiction, but not merely to support proceedings abroad or investigate lawful activities elsewhere. A stay pending a further appeal should be shaped to preserve the appeal court’s ability to do justice. The court must balance likely harm to each side, wider consequences and practical safeguards. Security for damages arising from past infringement should not ordinarily be imposed where it would risk destroying the respondent’s business and frustrating the appeal.

Regeneron succeeded in patent infringement and validity proceedings against Kymab and Novo at first instance before Henry Carr J in the Patents Court. The Court of Appeal subsequently gave judgment on the substantive appeal in [2018] EWCA Civ 671, and this judgment resolved disputes about the form of the final order.

The court considered the final injunction, delivery up or destruction, disclosure, an enquiry as to damages or account of profits, publication, costs, and a stay pending an application for permission to appeal to the Supreme Court. The central questions concerned the necessity and proportionality of relief and the balance of justice pending a further appeal.

1. Permission to appeal. Permission to appeal to the Supreme Court was refused because the proposed appeal did not raise a point of law of general public importance.
2. Injunction and delivery up. An injunction restraining infringement of the 287 and 163 patents was appropriate. It preserved the medicinal product assessment exception under Patents Act 1977, s.60 (6D)–(6E), read with s.60(5) (b), and permitted the production of non-infringing mice. The court had power to order delivery up or destruction of cells engineered to produce antibodies where they had no suggested purpose other than producing antibodies by the infringing process. That order was necessary and proportionate to make the injunction effective.
3. Disclosure. The court had jurisdiction to grant a remedy to which a claimant was entitled even though it was not specified in the claim form. Disclosure was refused where it was not necessary to prevent infringement in the United Kingdom or was sought to assist proceedings in another jurisdiction. It was ordered in a limited form for products and antibodies made or kept in infringement but disposed of by Kymab in the United Kingdom. Any later application for disclosure in support of an enquiry as to damages or account of profits was left to be decided on its merits.
4. Stay pending appeal. The discretion should be exercised so that the final appeal court could best do justice between the parties. The court assessed the likely harm, including harm difficult to quantify, disruption to research and collaborations, risks to Regeneron’s rights, and the safeguards offered by undertakings. The injunction and delivery-up order were stayed subject to defined undertakings. A stay of the limited disclosure order was also granted.
5. Costs and publication. Publication of the judgment was refused as serving no proper purpose. Regeneron was awarded 62% of its costs below, costs of the appeal jointly and severally against Kymab and Novo subject to the stated adjustment, and interim payments of £1,023,763 by Kymab and £807,050 by Novo.

• Court of Appeal (Civil Division): The substantive appeals from the Patents Court were determined in [2018] EWCA Civ 671. This judgment dealt with the form of order and consequential relief.
• High Court of Justice, Chancery Division, Patents Court: Henry Carr J gave the judgment under appeal in [2016] EWHC 87 (Pat).