The High Court has ordered Bristol-Myers Squibb (BMS) to provide a broader undertaking as to damages and allowed Teva to question a BMS witness orally about an answer concerning the company’s patent ownership policy. The orders were made in separate applications during proceedings over the validity of an Irish patent for apixaban, the active ingredient in Eliquis. The judgment did not decide the patent’s validity.
In the first application, Teva argued that BMS’s answer to an interrogatory about whether it had a written policy governing intellectual property held by BMS Pharma Company was insufficient. The answer said that no such policy had been identified, apart from certain October 2001 emails and other documents. Teva said those referenced materials appeared to point to a different policy, creating an unresolved contradiction relevant to its challenge to the patent’s claimed priority date.
Justice Max Barrett held that the answer was insufficient on its face because it appeared to conflict with the materials it referenced. He ordered a narrowly focused viva voce examination of Scott Brown on four proposed questions about the policy described in a manual and a January 2002 email, whether it was implemented, and whether it was followed in this case. The examination was to take place promptly before the substantive hearing, which was due to begin on 4 July 2023. The judge did not determine what the policy was, whether the materials could be reconciled, or whether Teva’s priority challenge would succeed. Concerns about BMS’s discovery process were left for the substantive hearing.
In the second application, Teva sought to extend BMS’s undertaking as to damages to losses suffered by Teva and related companies if the injunction caused loss and the court later decided compensation was due. Teva’s evidence was that profits were shared within its group and that company structures could change. BMS opposed extending the undertaking to other entities.
The court approved Teva’s proposed form of undertaking. It would require BMS to abide by any later order for compensation if the court found that the injunction caused loss to Teva or its related companies and decided they should be compensated. The judge said the undertaking did not itself establish an entitlement to damages: Teva would still have to prove loss, causation and quantum at a damages inquiry. He directed that it take effect from the date of the injunction order.
The injunction remained in place pending determination of the proceedings. The judge said Teva had succeeded in both applications and indicated that costs should ostensibly be awarded to Teva, while allowing either side to seek a brief hearing on costs.