Dec 8
N marketed fingolimod for the treatment of relapsing-remitting multiple sclerosis (“RRMS”) at a twice daily dosage of 0.5 mg under a European patent but did not have patent protection for that dosage regime in the United Kingdom. T obtained a marketing authorisation for a generic fingolimod in the UK and issued a claim in the Patents Court for an Arrow declaration that the importation, disposal, use and keeping by it of generic fingolimod in the UK for use in the treatment of RRMS at the daily dosage would have been obvious as at the priority date of the patent application. The judge dismissed the claim for Arrow declaratory relief. T’s appeal was expedited at T’s request because N had commenced proceedings for infringement of the patent and applied for preliminary injunctions T in several European Union member states, including Germany. T wished, if successful on the appeal and on the subsequent determination of the issue as to obviousness, to be able to rely on an Arrow declaration and the court’s reasoned judgment on the issue of obviousness at a forthcoming hearing in Germany to consider an application for a preliminary injunction. T was also concerned about the possibility of a preliminary injunction in Country A, whose identity was confidential, because its supply chain for their generic product involved it product passing through Country A before reaching the UK. The question for the court was whether it was proper for the courts of England and Wales to make a declaration for the purpose of influencing a decision by a foreign court on an issue governed by the law of that court.
On the appeal—
Held, appeal dismissed. The English courts had established the legitimacy in a number of specific contexts of the court taking into account the “spin-off value” of a judgment of the Patents Court, namely its value to the successful party going beyond the legal effect of the judgment within the United Kingdom on the validity and infringement of a European patent to the court of another contracting state of the European Patent Convention. However, it was one thing for a party to rely upon the spin-off value of a Patents Court judgment on a patent or patent application designating the UK but it was quite another for a claimant to seek a declaration from the court solely for the purpose of influencing a decision by a foreign court where the issue before that foreign court was governed by the law of that country, albeit that the relevant foreign law was substantially harmonised with the relevant UK law. As a matter of principle it was wrong for an English court to grant such declaratory relief where the parties had full and unimpeded access to the foreign court. It was not the function of the courts of England and Wales to provide advisory opinions to foreign courts seised of issues to be determined under their laws. The English courts had no special competence to determine such issues and, if anything, were likely to have less competence than the local courts. It made no difference that the English court and the foreign court were applying the same basic law. Further, comity required restraint by the English courts to prevent the English courts from enabling forum shopping. In the present case, the judge’s finding that a declaration was not required in order to redress uncertainty in the UK market meant that the only purpose of an Arrow declaration would be to assist the courts of Germany and Country A in deciding issues under their own laws. Accordingly, the judge was correct to dismiss T’s claim (paras 25, 26, 35, 36, 51, 52, 64, 65, 67, 68).
Justin Turner KC and Katherine Moggridge (instructed by Pinsent Masons LLP) for Teva.
Andrew Waugh KC and Geoffrey Pritchard (instructed by Bristows LLP) for Novartis.