AMGEN Inc v Sanofi-Aventis Groupe S.A. & Ors

Where parties agree a stay on terms that specify when it may be lifted and the consequences of lifting it, the agreed trigger may itself constitute the necessary grounds for removal. The court should give effect to the substantive bargain rather than treat the trigger as merely one case-management factor. A party seeking removal need not establish an additional positive case unless the agreement imposes such a requirement. Once the agreed stay has been removed, the other party may seek a fresh stay on ordinary case-management or other grounds.

The defendants applied to lift an agreed stay in patent infringement proceedings. The stay had been imposed by a quasi-Tomlin order pending the final decision of the European Patent Office. The agreement provided that either party could apply to lift the stay if the EPO final decision had not been made by 29 February 2020. It also provided that, if the stay remained in place until the EPO decision, the defendants would be bound by that decision on validity.

The issue was whether the defendants were entitled to removal merely because the agreed date had passed, or whether they had to establish proper grounds by reference to wider case-management considerations.

1. The defendants’ application was granted and the stay was lifted. On the true construction of the agreement, the defendants were entitled to have the stay removed once the specified time condition had occurred. They did not have to demonstrate any additional factual or case-management justification.

2. The stay was not merely a conventional case-management stay. Its removal affected substantive rights because the defendants would otherwise be bound by the EPO’s decision on the validity of specified claims. The agreed option to escape that consequence was therefore not a factor to be weighed with ordinary considerations concerning concurrent proceedings.

3. The wording of the agreement contained no further limitation based on delay, proximity of the EPO decision or the desirability of avoiding duplicated costs. The parties could have imposed such limitations but had not done so. The fact that the defendants applied only shortly before the anticipated EPO decision did not alter the construction.

4. SP v BH [2020] 1 WLR 2175 did not require a different result. Its statement that a stay may be removed for proper grounds or good cause described the ordinary position. Where the parties have agreed the circumstances constituting grounds for removal, the agreed occurrence supplies those grounds.

5. The conclusion did not prevent either party from seeking a further stay after the agreed stay had been removed, whether for case-management reasons or otherwise. The court did not determine the defendants’ alternative arguments based on alleged new evidence, changes in the law or paragraph 11(c) of the agreement.