Injunctions: an increasingly flexible and pragmatic approach
In recent years, the UK Patents Court has demonstrated that it is prepared to be flexible and pragmatic when considering remedies for patent infringement. Whilst a successful patentee will usually be entitled to a permanent injunction preventing further sales of an infringing product following a finding of infringement, this will not always be the case, as demonstrated by two decisions:
Edwards Life Sciences v Boston Scientific: Stay of injunction to allow re-training by clinicians
Having found one of Boston’s patents valid and infringed by Edwards’ Sapien 3 product, the Court had to consider injunctive relief. The parties accepted that the injunction should be stayed for a period (and then qualified for a further period), having regard to the impact it would have on the health of patients with aortic stenosis. They also agreed that a number of clinicians currently trained to use the Sapien 3 would need retraining to use another device, but did not agree how many clinicians this would apply to, and how long they would need. Boston argued for a stay of two to three months, whereas Edwards sought a stay of 18 months.
Whilst there was considerable uncertainty over the length of the re-training process, the Judge decided it was likely to be at least a year and therefore allowed continued implantation of the Sapien 3 for a 12 month period (Edwards could apply to extend the stay if necessary). In addition, as the Sapien 3 was the only suitable device for a small but growing number of patients, Boston could apply to terminate the exception if suitable non-infringing devices become available.
Regeneron v Kymab: Stay of injunction pending appeal
In March 2018, the Court of Appeal found that various strains of Kymab’s transgenic mice would infringe Regeneron’s patents. It was accepted that an injunction should not prevent Kymab from doing any acts for the purpose of a medicinal product assessment (i.e., for experimental purposes), but Kymab also sought a stay of the injunction (and other orders) pending its application for permission to appeal to the Supreme Court, offering certain undertakings to the Court. Specifically, Kymab wanted to pursue current and future collaborations funded by the Gates Foundation and a collaboration with Heptares.
The Court of Appeal accepted that, if it did not stay the injunction, Kymab would suffer serious loss and damage which would be extremely difficult to quantify; it would also end or at least seriously disrupt its collaboration projects, and cause it serious reputational and financial harm (including the prospect of researchers being made redundant). There was a risk of irreparable harm to Regeneron also but this could be ameliorated by undertakings offered by Kymab (including not to commercialise any product developed under its partnership with the Gates Foundation prior to the determination of its appeal, to limit other collaborations to those identified in the evidence, and to transfer to the Gates Foundation all rights it has to any products developed using Kymice prior to the patents).
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