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Napp Pharmaceutical Holdings Ltd. v (1) Dr Reddy’s Laboratories (UK) Ltd. (2) Sandoz Ltd., High Court of England and Wales (Arnold J), London, UK, 7 March 2016, Neutral Citation Number:  [2016] EWHC 493 (Pat)

On 7 March 2016, Arnold J considered whether it was appropriate to hear applications for the trial of a preliminary issue on infringement separately from a pending application for an interim injunction, where the former applications were issued on short notice.

Napp is the proprietor of patents concerning seven-day buprenorphine transdermal patches.  Having discovered that Sandoz and Dr Reddy’s were in various stages of pre-launch activity regarding their own respective seven-day buprenorphine transdermal patches, Napp commenced patent infringement proceedings and applied for an interim injunction against Dr Reddy’s and Sandoz in late February 2016.  Napp’s application for an interim injunction was due to be heard between 14-16 March 2016.

On 2 March 2016, Sandoz issued an application seeking an order that there should be trial of a preliminary issue on infringement, which they proposed should take place at the end of April 2016.  Sandoz requested that the Court hear the application on 7 March, less than the required 3 days’ notice period under the court’s procedural rules.  On 4 March, Dr Reddy’s issued its own application for a trial of a preliminary issue on a proposed counterclaim for a declaration of non-infringement, which they proposed should take place in June 2016. It also failed to give the requisite notice, seeking to have the application heard on 7 March.  Both parties requested that the Court exercise its discretion to hear the applications notwithstanding the failure to give appropriate notice.

At the hearing on 7 March, the key issues were whether a trial of a preliminary issue on infringement was appropriate in principle; and, if it was, whether the necessary directions for such a trial could be set down separately at a later date.  Arnold J noted that agreeing directions would be hard.  Amongst other things, Napp were likely to oppose the proposed hearing date of late April, Dr Reddy’s had not engaged an expert, Napp’s expert was unlikely to be available in late April and the parties’ position on validity was unclear.

Dr Reddy’s submitted that, if necessary, the Court could “divorce the issue of principle from the question of directions”.  Arnold J disagreed – in exercising its discretion, the court would need to consider not only the question of principle but also the timing of the preliminary issue.  Added to that, it was unfair to expect Napp to deal with this issue on such short notice.  He noted that Sandoz had not served its PPD until Friday 4 March, the same day that Dr Reddy’s application was issued and served, and, as such, Napp had not had sufficient time to consider its position in relation to the applications.  Arnold J also found that it was unrealistic to separate the question of the trial of a preliminary issue from the question of the grant of an interim injunction.

Arnold J denied Dr Reddy’s and Sandoz’s request to hear the applications on short notice.  Napp should not have to argue the question of whether a trial of a preliminary issue on infringement was appropriate on such short notice and when an interim injunction hearing was scheduled to take place within a week.  The fairest solution was for all the applications to be heard together.

A copy of the judgment can be found here.

Charlie Balme and Beth Williams, Marks & Clerk Solicitors