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Abbott Gmbh & Co Kg And Another v Pharmareg Consulting Co Ltd And Others

Judgment Cited authorities 2 Cited in Precedent Map Related
Vincent
Judgment Date08 January 2010
Year2010
Judgement NumberHCA166/2009
Subject MatterCivil Action
CourtHigh Court (Hong Kong)
HCA000166A/2009 ABBOTT GMBH & CO KG AND ANOTHER v. PHARMAREG CONSULTING CO LTD AND OTHERS

HCA166/2009

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO. 166 OF 2009

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BETWEEN
ABBOTT GMBH & CO. KG 1st Plaintiff
ABBOTT LABORATORIES LIMITED 2nd Plaintiff
and
PHARMAREG CONSULTING COMPANY LIMITED 1st Defendant
YIN’S TRADING COMPANY LIMITED 2nd Defendant
LIN KIM FUNG 3rd Defendant

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Before : Hon Suffiad J in Chambers

Date of Hearing : 18 November 2009

Date of Decision : 18 November 2009

Date of Reasons for Decision : 8 January 2010

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REASONS FOR DECISION

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1. This is an application by the plaintiffs by Summons dated 11 November 2009 for extension of an interlocutory injunction against the 1st and 2nd defendants granted by Sakhrani J on 27 March 2009 for a further period of nine months after the expiry of the plaintiffs’ patent on 21 November 2009.

2. After hearing arguments from both parties, I granted the plaintiffs’ application and indicated that I will give my reasons in writing at a later date, which I now do.

Background

3. The 1st plaintiff is the registered owner of Hong Kong Standard Patent No. 1006002 (“the Hong Kong Patent”) which claims the use of a chemical compound commonly known as Sibutramine in the manufacture of medicaments for the treatment of obesity.

4. The 2nd plaintiff has been granted an exclusive licence by the 1st plaintiff for the use in Hong Kong of the Hong Kong Patent.

5. The 2nd plaintiff has spent extensive effort in promoting the anti-obesity drug “Reductil”, the active ingredient of which is Sibutramine, in Hong Kong to healthcare and medical professionals including doctors and hospitals as well as in the retail market including pharmacies and consumers.

6. There is no dispute that the 2nd plaintiff has spent from about US$234,000 in 2002 to US$1,507,000 in 2008 for promoting Reductil in Hong Kong. This has resulted in substantial growth in sales from US$2,706,000 in 2002 to US$6,433,000 in 2008.

7. Reductil sales account for some 40% of the 2nd plaintiff’s total sales revenue in Hong Kong and is the 2nd plaintiff’s best selling drug in Hong Kong.

8. The plaintiffs’ case is that the defendants have infringed the Hong Kong Patent by, without the consent or authorization of the plaintiffs and pursuant to a common design with Micro Labs Limited (“Micro Labs”) of India, the manufacturer of the pharmaceutical products OBIRAX-10 Cap 10 mg and OBIRAX-15 Cap 15 mg (collectively referred to as “OBIRAX”), the 1st and 2nd defendants having imported, put on the market and stocked OBIRAX which are products obtained by the process referred to in claims 1 and/or 2 of the Hong Kong Patent.

Interlocutory Injunction granted by Sakhrani J

9. As already indicated above, this matter came before Sakhrani J in March of this year when he was asked to deal with the plaintiffs’ application for interlocutory injunction against the 1st and 2nd defendants.

10. In dealing with that matter, Sakhrani J granted the interlocutory injunction sought by the plaintiffs and gave his Reasons for Judgment in writing on 17 April 2009.

11. I am in full agreement with all that was said by Sakhrani J in his Reasons for Judgment. What has been stated by Sakhrani J there also applies to this present application before me. I therefore gratefully adopt the entirety of Sakhrani J’s Reasons for Judgment for present purposes.

12. The interlocutory injunction granted by Sakhrani J was ordered to be up to 21 November 2009 (being the expiry date of the Hong Kong Patent) or until further order.

13. There was no appeal by the defendants from the decision and the order made by Sakhrani J referred to above.

The present application for extension

14. The basis for this application by the plaintiffs for extension of the injunction order granted by Sakhrani J is that the 1st defendant had by its alleged wrongful acts in infringement of the Hong Kong Patent, attempted to steal a headstart by importing or causing to be imported into Hong Kong OBIRAX thus allowing it to register same with the Department of Health even before the Hong Kong Patent had expired.

15. It is not disputed that such registration by the 1st defendant with the Department of Health took some nine months before it was completed.

16. Accordingly, the plaintiffs now ask for the extension for nine months beyond the expiry of the Hong Kong Patent.

17. The plaintiffs have also issued Order 14 proceedings against all defendants for summary judgment, but dates are yet to be fixed for the hearing of the Order 14 application.

18. In bringing this application, the plaintiffs rely on the decision in Simth Kline & French Laboratories Ltd & another v Douglas Pharmaceuticals Ltd [1991] FSR 522 for the proposition that importing and using a patented drug for the purpose of applying for government approval or registration constitute acts of infringement of the patent.

19. The plaintiffs also rely on the decisions in Dyson Appliances Ltd v Hoover Ltd (No. 2) [2001] RPC 544 at 558-568 and in Generics BV v Smith Kline & French Laboratories Ltd [1997] RPC 801 for the proposition that the court will grant an injunction extending beyond the date of expiration of a patent in order to prevent an infringer from unfairly benefiting from any advantage sought to be obtained by an infringer from acts of infringement committed during the term of the patent.

20. Applying those principles to the present case, the plaintiffs submit that since the defendants have imported and used the infringing Obirax capsules to apply for registration of OBIRAX-10 Cap 10 MG and OBIRAX-15 Cap 15 MG, and the application process took nine months, such acts constituted infringement of the Hong Kong Patent.

21. Through such acts of infringement the 1st defendant has armed itself with registration of the aforesaid products which would enable the defendants to start marketing and selling the products immediately after the expiration of the Hong Kong Patent on 21 November 2009, unless restrained by the court by extending the injunction beyond the time of expiration of the Hong Kong Patent.

22. The plaintiffs have applied in their application for summary judgment for the “springboard” injunctive relief against the defendants to stop them from benefiting from their acts of infringement committed during the term of the Hong Kong Patent. But since dates have yet to be fixed for the hearing of the summary judgment application, it is just and reasonable for the injunction to be extended until after hearing of the summary judgment application, but not longer than for nine months.

23. The plaintiffs further submit that such extension of the injunction would only prohibit the defendants from marketing and selling OBIRAX-10 and OBIRAX-15 during the extension and any loss to the defendants, if the injunction was wrongly granted, can be compensated in damages by the plaintiffs upon their undertaking. But on the other hand, the damage caused to the plaintiffs by the acts of infringement, even in respect of the post-expiry period, if the injunction was not granted, would be difficult to quantify.

Preliminary points taken by defendants to plaintiff’s application

24. Before dealing with the merits, the defendants took a number of preliminary points in respect of the application by the plaintiffs.

25. I shall deal with each of the preliminary points taken by the defendants in turn.

26. Firstly, it was submitted that the plaintiffs did not come to court...

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