Regeneron Pharmaceuticals, Inc. & Anor v Rinat Neuroscience Corp.

In patent proceedings, case management should ordinarily seek to resolve related validity and infringement issues at one trial. A patentee should be required to bring an infringement counterclaim where it has sufficient information to plead the claim, particularly where infringement is effectively admitted and postponement would leave relief unavailable. The court should not compel a patentee to bring claims for which the necessary information is unavailable. Where further information may be generated by a declaration of non-infringement, that procedure may justify a later order requiring an infringement claim.

The claimants sought revocation of three patents concerning anti-NGF antibodies for treating osteoarthritis. The defendant counterclaimed for infringement of the earlier patent but had not counterclaimed in respect of two divisional patents.

The claimants applied for an order requiring the defendant to bring infringement counterclaims immediately or lose the opportunity to do so. The dispute concerned whether the defendant had sufficient information to plead infringement, including in relation to claim 24 of EP (UK) 2,305,711.

1. Order for claim 24. The overriding objective required the court to consider whether related issues could be resolved together at one trial. In relation to claim 24 of EP (UK) 2,305,711, the claimants had given an unqualified acceptance that their dealings in fasinumab in the United Kingdom would infringe. The defendant therefore had sufficient information to bring an infringement counterclaim. It was wrong to postpone the claim on the basis that relief could be addressed later, because without an infringement claim there would be no relief for infringement. The defendant was ordered to bring the counterclaim in respect of claim 24.
2. Other claims. The court would not require counterclaims concerning the remaining claims because the defendant lacked sufficient information, including a draft marketing-authorisation label and adequate clinical data, to formulate them responsibly.
3. Possible future procedure. If the claimants wished to put the other claims in issue, they could seek declarations of non-infringement based on draft labels or comparable information. If that process provided the defendant with the information necessary to plead infringement, a further order requiring infringement counterclaims might be appropriate.

not stated in the judgment.