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Glaxosmithkline UK Limited v Wyeth Holdings LLC, High Court, London, UK, 13 January 2017, Neutral Citation Number: [2017] EWHC 91 (Pat)

This is a judgment from Henry Carr J on preliminary issues relating to the remedies available to Wyeth (referred to as its parent company, Pfizer) for infringement of its patent by GSK. The key question at issue was whether Pfizer was entitled to an account of profits in lieu of an injunction for future infringements and whether the Court had jurisdiction to grant such relief.

Readers may recall that in early summer 2016 Henry Carr J held Pfizer’s patent relating to vaccines for meningitis B to be valid and infringed by GSK’s Bexsero vaccine (this was reported on this blog here). Notably, Wyeth did not seek an injunction at trial to restrain, inter alia, sales of Bexsero as it recognised the public health requirements for vaccines against meningitis B to be available (The judgment on validity and infringement of Wyeth’s patent was appealed and that appeal is due to be heard in December this year.)

Instead, in its pleading at trial, Pfizer asked for:
(1) a declaration that the patent is valid;
(2) a declaration that the importation into the UK and the keeping, offering for disposal and disposal of the claimant’s Bexsero vaccine in the UK constitute infringements of certain claims of the patent;
(3) an inquiry as to damages for the claimant’s infringements of the patent or, at the defendant’s election, an account of profits;
(4) an inquiry as to damages in lieu of a final injunction;
(5) an order for payment of all sums found due to the defendant on such inquiries or account;
(6) costs; and
(7) further or other relief.

At the hearing on the preliminary issues, Pfizer relied on point (3), above, in support of its position that it was entitled to an account of profits in lieu of an injunction for future infringements. Pfizer stated that the wording of point (3) was sufficient to cover past and future infringement and, as such, Pfizer was entitled to an account of profits for both past as well as future infringements. However, Henry Carr J did not agree, as only point (4) referred to relief in lieu of an injunction, and that point referred to damages, not an account of profits.

Pfizer further relied on point (7), the request for “further or other relief” as a basis on which an account of profits for future infringement could be sought. In considering whether this was allowable, Henry Carr J looked to Kirin Amgen Inc. v Transkaryotic Therapies Inc. (No. 2) [2002] RPC 3 and the principles set out therein by Neuberger J. Henry Carr J noted that in that case it was held that for additional relief to be allowed under the head “further and other relief” the relief sought must first be consistent with that specifically claimed, as well as with the overall case pleaded; secondly, the facts pleaded must support the relief now sought; thirdly, relief would not normally be awarded in respect of a claim of a type not pleaded; and fourth, the relief must not take the defendant by surprise.

Henry Carr J considered that there was nothing in the pleadings which could have alerted GSK that an account of profits for future infringement was being sought. Therefore, if Pfizer wished to seek this relief it would need to amend its pleadings. There was no application for amendment before Mr Justice Carr and he was not minded to allow a further adjournment of proceedings for an amendment to the pleadings to be made. In any event, applying Neuberger J’s test, Henry Carr J considered the relief now sought was not consistent with the relief pleaded, and noted that the Court would not normally allow relief in respect of a claim which has not been pleaded. Further, the Judge considered that the relief now sought would, objectively, have been a surprise to GSK.

Henry Carr J further held that even if it were possible for Pfizer to seek an account of profits for future infringement, he would not, as a matter of discretion, allow this. He noted that a basic principle of accounts of profits is that there should be some unconscionable or improper conduct by the defendant. In circumstances where Pfizer had not sought an injunction and had recognised that GSK should be allowed to continue to supply Bexsero because it is in the interests of public health to do so, there was no unconscionable or improper conduct by Wyeth in continuing to infringe the patent by supplying Bexsero. Indeed, he considered that requiring an account of profits for future infringement could have the same effect as an injunction, as GSK would either have to stop selling the medicine or sell it for no profit (once their profits had been sent to Pfizer).

Given the above findings, the judge did not have to go on to consider whether he had jurisdiction to grant an account of profits, although arguments were made on this point at the hearing.

Whilst, as noted above, Henry Carr J did not consider an account of profits could be claimed for future infringements, he did go on to hold that such relief could be claimed for past infringements.

The judgment can be found here.

Headnote by Katie Cambrook, Bristows LLP