Glaxosmithkline UK Ltd v Wyeth Holdings LLC, Court of Appeal - Patents Court, January 13, 2017, [2017] EWHC 91 (Pat)

Resolution Date:January 13, 2017
Issuing Organization:Patents Court
Actores:Glaxosmithkline UK Ltd v Wyeth Holdings LLC

Case No: HP-2015-000022

Neutral Citation Number: [2017] EWHC 91 (Pat)




The Rolls Building

7 Rolls Buildings

Fetter Lane

London, EC4A 1NL

Date: Friday, 13th January 2017



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Transcript of the Stenographic Notes of Marten Walsh Cherer Ltd.,

1st Floor, Quality House, 5-9 Quality Court, Chancery Lane, London WC2A 1HP.

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MR. THOMAS MITCHESON QC and MR. TIM AUSTEN (instructed by Fieldfisher LLP) for the Claimant

MR. RICHARD BOULTON QC and MR. WILLIAM DUNCAN (instructed by Marks & Clerk Solicitors LLP) for the Defendant

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  1. The first application that I need to consider is made by the defendant (referred to at the hearing by the name of its parent, Pfizer) which is the patentee in this case, for determination of the basis upon which damages or, alternatively, an account of profits can be allowed to proceed in the present case.

  2. The matter has come before me in a slightly unusual way, but it has been clarified by the parties that they wish me to treat certain points as preliminary issues in order to save what will undoubtedly be an expensive inquiry going off on the wrong foot, with the risk that a great deal of evidence will be served which is subsequently held to be, as a matter of law, inadmissible and irrelevant. Therefore, I am prepared to consider this application on that basis.

  3. The issues which have been helpfully set out by Mr. Mitcheson QC in GSK UK's skeleton argument are as follows: first, whether it is open to Pfizer to claim an account of profits at all, whether for past or future infringements; second, whether there is a juridical basis for Pfizer to claim an account of profits in lieu of an injunction with respect to future infringements; third, whether it is open to Pfizer to claim on its pleadings an account of profits in lieu of an injunction with respect to future infringements; fourth, whether Pfizer may elect for a basis for pecuniary relief for future infringements that is different from the basis for pecuniary relief sought in relation to past infringements, and whether it is proportionate for GSK UK or the court to have to deal with an award made on two different bases; and, fifth, in respect of any future relief, whether any award to Pfizer may be by way of (a) lump sum payment to cover future acts of infringement, (b) periodical payments of damages or profits, (c) deferred retrospective award of damages or profits, or (d) another mechanism at the discretion of the judge.

  4. Whilst I have said that I am prepared to deal with this application on the basis of preliminary issues, that does not mean that I consider it necessary or even appropriate to decide all these points. That depends upon whether, for example, an account of future profits is precluded by the fact that it has not been pleaded, or as a matter of discretion.

  5. Mr. Mitcheson on behalf of GSK UK concedes that, as to past acts of infringement, there is jurisdiction for me to grant an account of profits, but contends I should not do so as a matter of discretion. That concession is inevitable in the light of section 61 of the Patents Act 1977, which expressly provides for an account of profits as an option. On the other hand, he says that, in respect of future infringements, in circumstances where an injunction has not been sought by Pfizer, there is no jurisdiction to grant an account of profits, but, even if there is, I should not do so in the present case as a matter of discretion.

  6. The way that I propose to approach this judgment is to begin by considering whether it is open to Pfizer to seek an account of profits for future infringements in the present case and, if so, whether as a matter of discretion I ought to make such an order. For this purpose, I will assume that there is jurisdiction to make an order for an account of profits in lieu of an injunction without deciding that question. If I decide that an order ought in principle to be made, then I will go on to consider whether there is jurisdiction to do so.

  7. Before turning to these issues, I should set out something of the background to this case. GSK UK markets in the United Kingdom a meningitis B vaccine under the name Bexsero. Between 2nd March 2015 and 29th February 2016, Novartis Vaccines & Diagnostics UK Ltd sold Bexsero in the UK market on behalf of GSK UK. GSK UK took over sales in the UK market on 1st March 2016.

  8. At the present date, Pfizer itself does not market a meningitis B vaccine in the UK. Its own Trumenba vaccine has not yet been authorised in Europe and will...

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