The Court of Appeal has overturned a High Court order requiring Bristol Myers Squibb Holdings Ireland Unlimited Company (BMS) to extend its undertaking as to damages to companies related to Norton (Waterford) Limited, trading as Teva Pharmaceuticals Ireland (Teva). The court held that Teva raised the issue after the High Court had decided to grant an injunction, and that its evidence did not justify expanding the undertaking.
The dispute arose from BMS’s application to stop Teva launching a generic version of Eliquis, which contains apixaban. BMS holds an Irish patent and a supplementary protection certificate (SPC) relating to the medicine. Teva had brought separate proceedings seeking to revoke the patent and SPC.
In February 2023, the High Court decided to grant BMS an interlocutory injunction pending trial, on the basis of BMS’s usual undertaking to abide by any order for damages if the court later considered Teva had suffered loss for which BMS should pay. Teva did not challenge the undertaking’s scope during that application. After the decision, it sought to have the undertaking cover loss suffered by related companies as well as Teva itself. The High Court later ordered the extension, subject to conditions including that indirect loss would not be covered and Teva would have to prove its loss.
BMS appealed. In a judgment delivered on 1 March 2024, the Court of Appeal held that the scope of an undertaking is part of the court’s assessment of whether to grant an injunction. A challenge to its adequacy must be raised while that question remains live, supported by evidence that lets the court assess the alleged loss. The court said the High Court erred by considering the proposed extension after delivering its decision on the injunction.
The appeal court also found that Teva’s evidence did not establish why the undertaking should cover all companies in its group. An affidavit referred to possible profit sharing and future corporate restructuring, but did not identify the other companies or provide sufficient detail about their role or likely losses. The court said submissions could not replace the evidence needed to support the application.
The court recognised that it has jurisdiction, in an appropriate case, to require an undertaking benefiting a non-party that may suffer loss from an injunction. It said such an extension must be raised at the proper time and supported by sufficient evidence. The court did not decide whether an expanded undertaking would be compatible with EU law, leaving that question for a case where it is necessary to resolve the dispute.
BMS was described as wholly successful in the appeal. The court’s preliminary view was that it should receive the appeal costs, subject to Teva’s right to request a short hearing on costs within 10 days. The judgment addressed the scope of the damages undertaking; it did not decide the separate appeal concerning the patent’s invalidity.