Justice Arnold U-turns on Pharmacia case

Justice Arnold of the England and Wales High Court has decided to reverse a previous decision and grant Pfizer subsidiary Pharmacia its application to stay Actavis’s patent revocation action against it.

Seeking to launch a sustained release pramipexole product for the treatment of Parkinson’s disease, Actavis filed to revoke Pharmacia’s patent covering the drug for lack of novelty.

Pharmacia applied to stay the action until the European Patent Office (EPO) had determined the patent’s validity. Actavis argued that the English proceedings would be concluded much earlier than the EPO’s proceedings, creating a degree of commercial uncertainty, and so the stay should be refused.

On July 11, Arnold agreed. However, a renewed application filed by Pharmacia on July 23 changed his mind.

The key consideration was the length of time it would take for the EPO proceedings to be resolved, he said.

While the undertakings Pharmacia offered at the time largely eliminated the commercial uncertainty to Actavis during the period of the stay, they did not address the uncertainty caused by the prospect that Actavis might be removed from the market by an injunction, requiring it to pay damages, he said.

He decided that the additional undertakings meet that point, and “accordingly do substantially eliminate the commercial uncertainty to which Actavis will be exposed in the [UK] as a result of a stay.”

Arnold added: “Taking all of the factors set out in the judgment into consideration, it seems to me that the overall balance now comes down in favour of the grant of a stay.”

Actavis continues to resist a stay, arguing that an early decision from the High Court would remove the commercial uncertainty caused by the patent at issue.