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Court of Appeal hands down FKB v AbbVie judgments

On 11 January 2017 the Court of Appeal gave judgment in the joined appeals from FKB v AbbVie No 1 [2016] EWHC 425 (Pat) and FKB v AbbVie No 2 [2016] EWHC 2204 (Pat).

Both appeals had been expedited, and were of major commercial significance: AbbVie’s Humira product which it sought to protect has a market worth £1.5 million per day in the UK alone.

The main issue of principle was whether it was legitimate to grant an Arrow declaration that FKB’s products were obvious, in advance of grant of the patents. This had been upheld at first instance but never tested on appeal. In the FKB 1 appeal, the Court of Appeal held that the remedy was legitimate, upholding the decision of Henry Carr J in FKB 1 and also the previous decision of Kitchin J in Arrow v Merck [2007] FSR 39.

The distinct points in the FKB 2 appeal were argued for FKB by Thomas Raphael QC of 20 Essex Street, leading Geoffrey Pritchard of 3 New Square.

At first instance AbbVie had challenged the territorial jurisdiction of the Court to hear the claim for an Arrow declaration. Arnold J had rejected that jurisdiction challenge, for reasons discussed in a previous case note on this site (see here).

On appeal AbbVie did not pursue its jurisdiction challenge and instead appealed Arnold J’s decisions on two distinct points: his decision that there was a valid claim, which should not be struck out, against AbbVie’s UK subsidiary AbbVie Limited (“AbbVie UK”) and not just against the patentee, AbbVie Biotechnology Limited (“AbbVie Bermuda”); and his conclusion that there was also a valid cause of action for a form of domestic anti-suit injunction to restrain AbbVie from bringing proceedings for infringement in the UK.

Both grounds of appeal were rejected, upholding Arnold J’s conclusions. In relation to AbbVie UK point, the Court of Appeal agreed that there were real prospects that there would be a valid claim against AbbVie UK.

On the question of an anti-suit injunction, AbbVie had advanced a range of arguments to suggest that an injunction was impermissible, including arguments that domestic anti-suit injunctions such as this were contrary to principle, and ruled out by Article 6 ECHR. These arguments were rejected, and the Court of Appeal concluded that there was an arguable case for an injunction, although the need for, and terms of, any injunction would need to be assessed at trial. In doing so, the Court of Appeal followed in the steps of previous first instance authorities allowing for domestic anti-suit injunctions in patent cases, such as Landi den Hartog v Sea Bird [1976] FSR 489.

FKB’s barrister team was made up of Andrew Waugh QC, Thomas Raphael QC, and Geoffrey Pritchard, instructed by Gowling WLG.