Synapse - Law For Life Sciences: Latest News - March 2016

Adalimumab declaratory relief action allowed to proceed

Fujifilm Kyowa Biologics Co., Ltd (FKB) v Abbvie Biotechnology Ltd concerns patents and divisionals for every other week, single dose, subcutaneous injections of adalimumab that are awaiting grant. In order to ensure that it can market its own product, a biosimilar to adalimumab, despite these patents, FKB has sought a declaration that its own product is anticipated or obvious. The purpose of the declaration is to provide a Gillette defence which would render any claim that is held to cover the FKB product also novel or obvious. Abbvie applied to have this claim struck out. However, the court has dismissed this application, finding that there is a realistic prospect that the trial judge will exercise his or her discretion to grant the relief sought.

The decision

Account of profits in convoyed goods cases

The English decision in Design & Display Limited v OOO Abbott & Anor [2016] EWCA Civ 95 is a relatively rare occasion on which the Court of Appeal addresses accounts of profits in convoyed goods cases. The case concerned a patent for snap-in inserts made from a resilient metal, which are used on display panels for shops. Birss J held the patent to be valid, and infringed by Design & Display. The claimants elected for an account of profits, rather than damages, and the account was heard in the Intellectual Property Enterprise Court (IPEC). Two points arose on appeal to the Court of Appeal from IPEC:

are Design & Display liable for the whole of the profits made on the sale of panels sold together with the infringing inserts as incorporated parts (given that it is the inserts that are the patented invention and not the panels)? are Design & Display entitled to set off any part of their general overheads against the gross profit for which they are accountable? On issue 1, on the facts, customers specified panels, and were indifferent about the inserts (provided that some form of insert was included). The Court of Appeal held that the profits made on the panels would therefore have to be apportioned for the element contributed by the inserts. This was to be contrasted with a case in which the patented item was an essential ingredient in the creation of the defendant's whole product, in which circumstances account would be made of the whole profit (panels incorporated with inserts).

On issue 2, the Court of Appeal said the question to ask is: if the defendant had not infringed the patent...