Michael Tappin QC and Mark Chacksfield succeeded on four preliminary issues before Mr Justice Arnold in the High Court in Resolution Chemicals v H. Lundbeck A/S [2013] EWHC 739 (Pat). Of particular interest are the decisions concerning estoppel/abuse of process due to res judicata by reason of privity of interest, and the defendant’s application for summary judgement on obviousness of the patent based on earlier unsuccessful challenges to the patent both in the UK and abroad.
The estoppel/abuse of process application concerned whether the Resolution was estopped from bringing a patent revocation action in regard of the defendant’s patent for escitalopram. The issue arose because the validity of the patent had already been challenged in proceedings brought by Arrow Generics Limited, Teva UK Limited and Teva PI. Resolution Chemicals had been part of the Arrow group from December 2001 to December 2009 and, now as an independent company, intends to purchase escitalopram for import from Teva Poland.
The judge considered that simply being under the same ultimate control as Arrow at the time of the earlier litigation was not a sufficient basis for concluding that Resolution was privy. He considered that Resolution had no actual interest in the previous litigation. The judge also rejected any allegation of joint tortfeasance with Teva Poland under the agreement to purchase escitalopram as none of the acts in issue established that Teva Poland procured the infringement or secured its commission.
With regard to the summary judgement application the judge held that Resolution does have a real prospect of success on the basis of potential further expert evidence from three experts who gave evidence in a successful challenge to the Patent in the Netherlands. He rejected the suggestion that the decisions of Dutch courts were outliers. Further the judge considered that it was not possible to say that the claimant had no real prospect of success on a new piece of prior art added by amendment, that had not been in issue in the earlier proceedings.