The ongoing case between Warner-Lambert (a subsidiary of Pfizer) and Actavis concerning pregabalin (sold by Pfizer under the trade mark Lyrica, and by Actavis under the trade mark Lecaent) seems set to be the case of the year. There has already been one Court of Appeal decision (reported by IPKat here and here) and four first instance decisions ( see here, here, here and here). The trial proper will begin on Monday 29 June in Court 30 before Arnold J at 10.30am, if you are interested.
The IPKat has learned that there was a flurry of case management motions resulting in a decision that is not available on BAILII, but you can read it here. The IPKat suspects that there will be subtleties that are not clear to those of us not intimately involved in the conduct of the case, but it does give an insight and flavour of the degree of disagreement between the parties.
Interesting points (in the order that they appear in the judgment) are:
- A request by Warner-Lambert for inspection of Actavis's original Marketing Authorisation application, which apparently did not have a "skinny label" and so included the indication of pain, was refused.
- A request by Warner-Lambert for Actavis to identify a number of pharmacies who apparently refused to purchase pregabalin from Actavis was allowed, but only subject to the condition that Warner-Lambert was not to approach them without either the consent of Actavis or a further Order from the Court. The pharmacies involved apparently "do not wish to have anything to do with this litigation", and so Actavis was concerned that it would damage their relationship if the pharmacies were nevertheless dragged into the matter. Arnold J urged the parties to agree a joint approach to the pharmacies.
- Warner-Lambert is allowed to expand its confidentiality club by one further person, but not two.
- Evidence of the common general knowledge in the prior art of off-label use of gabapentin (a chemically similar compound) for the treatment of pain is not to be admitted, because of the lateness of the request to admit [Merpel thinks that this could be quite significant]
- Evidence about the degree to which pregabalin is being used for the treatment of pain on the other hand is to be admitted. [This is key to the quantum of infringement, so this is perhaps to be expected] From this part we also learn that the infringement part of the trial is not scheduled to begin until 9 July, so it appears that we have two weeks before we even get to the infringement part.