Michael Tappin QC and Mark Chacksfield appeared on behalf of the Defendants, (together, “AbbVie”) in AbbVie’s application to strike out two linked actions brought on behalf of the Claimants, “FKB”, “SB” and “Biogen”.
FKB/SB/Biogen sought declarations to the effect that biosimilar products for the antibody adalimumab (marketed by AbbVie as “Humira”) were obvious and/or anticipated at the priority date and therefore could not infringe AbbVie’s patents, or patents granted on any pending applications, for adalimumab.
Prior to the present application, AbbVie had de-designated the patents and applications concerned in respect of the UK and/or submitted them to revocation. Furthermore, it had given undertakings to the effect that it would not seek patent protection for adalimumab in the UK. AbbVie contended that the declarations sought by the Claimants could therefore serve no useful purpose and accordingly the claims should be struck out as being an abuse of process.
The judge held that the declarations could still serve a useful purpose, in particular by providing greater commercial certainty for the Claimants. Amongst the issues canvassed, the Judge held that although the ‘spin-off’ value of the declarations in supporting litigation in other European jurisdictions could not be relied on as sole evidence of useful purpose, it was a factor that could be taken into account in the exercise of the trial judge’s discretion.
In the circumstances, the judge held that there was a real prospect of the trial judge granting the declarations sought, and the action was not be an abuse of process.