Actavis
v Boehringer [2013] EWHC 2927 related to a dispute over the
combination of telmisartan and hydrochlorothiazide, which was marketed by
Boehringer and protected by an SPC.  Actavis wanted to sell the combination
product and believed the SPC to be invalid, but agreed to give an interim
undertaking not to sell the combination product, pending the resolution of the
dispute.  In return, Boehringer agreed to give a cross-undertaking.  However, there
was a dispute over how far the cross-undertaking should extend.

Actavis
sought a cross-undertaking that allowed (i) any company in the Actavis group
and (ii) any customer or potential customer of any company in the Actavis group
to obtain compensation for any loss it may have suffered as a result of the
interim undertaking.  Actavis argued that this was appropriate as it covered a
clearly defined class of persons and allowed for future corporate restructuring.

Boehringer
objected that the scope was too wide, as it did not identify the persons to
whom the cross-undertaking would extend.  It was argued that Actavis must have known
which companies in their group were involved and the reference to "customers
or potential customers" was said to be unclear.

Birss
J held that any cross-undertaking can extend to any class of persons who may
justly obtain compensation.  However, the relevant persons must be defined in
some suitable way, as must the potential loss or harm that may arise.  A
cross-undertaking was said to be the "price of an injunction" and so
it is important that the party paying the price knows with reasonable certainty
what it may be.

Regarding
the first group of persons, it was held that the relevant tasks (i.e., selling the
product) carried out by the Actavis group were clear and that these tasks
defined the persons affected by the undertaking, as well as the loss they would
suffer.  It was therefore deemed unnecessary to define exactly which persons in
the Actavis group would carry out these tasks.  Birss J also agreed with Actavis'
argument that the proposed wording would save Actavis having to reapply to the
court each time they are involved in a corporate restructuring.  The court was
therefore happy that the cross-undertaking should cover the first group of
persons.

However,
reference to the customers and potential customers in the second group was held
to be unclear, not least because the combination product had not yet been put
on the market by Actavis and so there were no customers.  Further, "potential
customers" was said to be extremely vague with no real definition of who
these could be or what loss they may suffer.  The cross-undertaking should
therefore not cover the second group of persons.

Birss
J also highlighted that third parties, such as customers or potential customers,
are able to apply to the court to be joined in proceedings such that they can
benefit from the cross-undertaking.  Allowing the cross-undertaking to extend to
the second group of persons would prejudge any such application and would
unfairly extend the scope of the cross-undertaking for the benefit of a few,
specific third parties.

It
is therefore clear that a cross-undertaking does not have to specifically
define the exact persons to which it extends.  However, its scope must be defined
in some way to allow the persons covered and the loss that they could suffer to
be identified, as the party making the cross-undertaking must know the
potential "price of the injunction."

This
report comes from European Patent Attorneys at WP Thompson & Co., 55 Drury Lane,
London UK.  Further details and commentary can be obtained from Gill Smaggasgale,
a partner at the firm.