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You are here: BAILII >> Databases >> England and Wales High Court (Chancery Division) Decisions >> Glaxo Welcome UK Lt (t/a Allen & Hanburys) & Anor v Sandoz Ltd & Ors [2018] EWHC 2679 (Ch) (26 September 2018) URL: https://www.bailii.org/ew/cases/EWHC/Ch/2018/2679.html Cite as: [2018] EWHC 2679 (Ch) |
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victim
is guaranteed lifetime anonymity (Sexual Offences (Amendment) Act 1992), or where an order has been made in relation to a young person.
BUSINESS AND PROPERTY COURTS OF
ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
7 Rolls Buildings Fetter Lane London, EC4A 1NL |
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B e f o r e :
____________________
(1) GLAXO WELCOME UK LT (T/A ALLEN & HANBURYS)(2) GLAXO GROUP LIMITED |
Claimants |
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(1) SANDOZ LIMITED(2) SANDOZ INTERNATIONAL GMBH(3) AEROPHARM GMBH (4) HEXAL AG (5) SANDOZ AG(6) VECTURA GROUP PLC(7) VECTURA DELIVERY DEVICES LIMITED |
Defendants |
____________________
MR. MARTIN HOWE QC and MS. IONA BERKELEY (instructed by White and Case LLP) for the 1st to 5th Defendants
MS. ANNA EDWARDS-STUART (instructed by Bristows LLP) for the 6th and 7th Defendants
Hearing dates 25 and 26 September 2018
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1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP.
Telephone No: 020 7067 2900. Fax No: 020 7831 6864 DX 410 LDE
Email: info@martenwalshcherer.com
Web: www.martenwalshcherer.com
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VERSION
OF JUDGMENT
Crown Copyright ©
CHIEF MASTER MARSH:
"2. In these proceedingsGlaxo
sues companies in the
Sandoz
group for allegedly passing off their generic inhaler product AirFluSal Forspiro, launched in the United Kingdom and elsewhere in 2015, as
Glaxo's
(now out-of-patent) Seretide Accuhaler inhaler, which has apparently achieved sales of more than £62 billion globally since launch in 1999.
3. Both products are prescription-only combination drugs for the treatment of chronic obstructive pulmonary disease (COPD) and severe asthma, marketed and sold in boxed dispensers."
[The judgment then provides get-ups of the respective products in pictorial form and continues:]
"4.Glaxo
has alleged that the defendants chose AirFluSal's get-up 'with the deliberate aim of deceiving or creating confusion in the mind of the relevant public'; and the defendants have accepted that the question of whether the public are deceptively confused may take into account the defendants' intentions and that their documents relating to the design history of their product (which, it has emerged, may go back as far as 2003/4) must be reviewed and disclosed if relevant."
5. That exercise by the existingSandoz
defendants has, they say, so far involved the review of 406,300 documents largely identified by agreed keyword searches using 50 legally qualified reviewers and the subsequent disclosure of 75,356 documents including, those held in the custody of some 40 of its employees or former employees (thus called 'custodians'), taking some six months and costing more than £2 million."
vacating
the trial date then fixed for October 2018 and made an order joining the sixth and seventh defendants. I will refer to them as the "
Vectura
defendants". As a consequence of the Deputy Judge's order, the trial is now re-fixed to take place in July 2019. The Deputy Judge's reasons for joining the
Vectura
defendants are relevant to the issues I have to determine and I will refer to them briefly.
Vectura
defendants being "a key party responsible for designing, developing and licensing the product complained of". He also refers to
Vectura's
leading role in that connection. At paragraph 26 he makes reference to the need to join
Vectura
because of the "likelihood or at least a possibility of a significant 'information gap' if
Vectura
are not joined". He makes a similar point at paragraph 48 of his judgment.
Vectura
to give disclosure. That, of course has to be measured against the six months that was taken by the
Sandoz
defendants in undertaking that exercise. The task for the
Vectura
defendants is likely to be a fairly substantial exercise which will have to be completed in three months. Against that, the universe of documents that is likely to be considered, to which the search terms will be applied, is probably fairly limited. There are two shared drives, Gyro and BR315 and some searches of P drives will be needed in addition. The
Vectura
defendants estimated in their disclosure report that the
volume
of data to be searched was of the order of 879 gigabytes which, in the overall scheme of things in the context of litigation of this type, is not a particularly large
volume
of data. Nevertheless, they provided an estimate of the likely costs involved at £400,000. There are, however, uncertainties because no scoping exercise has yet been undertaken.
Vectura
defendants – that are principally going to be the disclosing party. There is inevitably some tension between the disclosure that
Glaxo
seeks and what the
Vectura
defendants consider is reasonable and proportionate. The parties have agreed to give disclosure by reference to issues, that is on an issue-by-issue basis. I remark in passing that, of course, disclosure can only ever be given by reference to issues but what the parties have agreed to do here is that the issues will be closely defined and, importantly, limited. Much effort has gone into reaching agreement and the parties are to be commended for the work they have undertaken. That there are genuine differences between them is not a matter of surprise and indeed is not a matter for criticism. They have managed to agree most of the issues, all of the search terms and all of the custodians. Thus, the issues left for the court to determine are narrow in scope.
volume
of responsive hits. In any event, here there is agreement that there is the ability to review in an appropriate instance.
Glaxo,
some 50 lawyers were involved at a cost of £2 million. No doubt the approach the
Vectura
defendants will adopt will involve a staged exercise with initial reviews at a relatively low level with a process for reviews by more senior lawyers. But, plainly, clarity in the issues by which documents are to be measured is of great importance. The greater the clarity in the issues, the simpler and speedier, and thus less expensive, will the process be.
Issue One
v.
Asda Stores Limited [1997] RPC 513 at page 531.
Vectura
defendants to avoid causing deception by, as it is put by Kitchin LJ in Specsavers
v.
Asda [2012] EWCA Civ 24 at page 115 making "a conscious decision to live dangerously". Kitchin LJ goes on to say that the person "has appreciated the risk of confusion and has endeavoured to adopt a sign which is a safe distance away".
"Documents which evidence that the defendants, or any of them, had an intention to deceive members of the public that the AirFluSal Forspiro product is a product of the claimants or connected with the claimants or the claimants Seretide Accuhaler product or equivalent substitutable for the claimants' Seretide Accuhaler product."
Vectura
defendants to give disclosure of documents dealing with intention, including the intention to 'live dangerously' or 'sail close to the wind'. Both those terms were included in their suggested alteration to the issue. The claimants say that an appreciation of the risk is a notion that ought to be included in the disclosure issue. The
Vectura
defendants took a different approach and proposed adapting the original form of the issue merely by adding in parenthesis at the end "(including benchmarking documents)" to make clear that such a category of documents, where there is a comparison between actual and proposed product get up, was to be included.
Glaxo
parties have referred may be widely understood and, indeed, widely used in IP circles, but I consider that their application could be difficult by a reviewer. The defendants' approach has two problems with it. First, it limits the application of the issue in this respect to a particular class of documents, "benchmarking documents", and that, to my mind is unnecessarily restrictive and likely to exclude documents that should properly fall within the disclosure that is required in relation to intention. Secondly, the term "benchmarking documents" is, to my mind, too imprecise to be of real use to document reviewers.
Glaxo
claimants. With some minor adaptation, I have ordered that it be adopted. It is, to my mind, simple and clear. The wording is this:
"Documents which evidence that the defendants, or any of them, knew or had reason to believe that:
(a) there was a risk or likelihood of confusion; or
(b) there was a degree of similarity or matching in both cases between the get-up and packaging of AirFluSal Forspiro or its predecessors including, without limitation, all iterations of or concepts for the GyroHaler and the claimants' Seretide Accuhaler."
The inclusion of the reference to "all iterations or concepts for the GyroHaler" foreshadows my decision on the third issue which I will come to in a moment.
Issue Two
Vectura
defendants, the
Vectura
defendants not unreasonably took issue with the
very
broad nature of this disclosure issue. Their principal objection was put on the grounds of proportionality. The likelihood is that the
Vectura
defendants will have few, if any, documents that fall within the standard disclosure test; that is principally documents which are adverse to them concerning an issue put so broadly.
"Documents showing that the Accuhaler and Evohaler are associated in the mind of the relevant trade and public with the indicia set out in the re-re-amended particulars of claim."
I leave the remaining part of the issue unread.
Vectura
defendants, referred to the way in which the indicia are described in paragraph 14 of the particulars of claim. She submitted that, as a minimum, it is not clear that the indicia are to be taken both individually and together. It is certainly the case that to date the court has proceeded on the basis that the indicia are to be taken both separately and together. But it was not a question upon which it was appropriate for me to rule and I did not do so.
Vectura
defendants. The search terms and custodians have already been agreed and, thus, the inclusion of this issue does not add to the universe of documents that are to be reviewed. The inclusion of the issue will, I accept, add to the task of document reviewers but, in my judgment, not excessively so. It could be that there are no documents that are responsive to this issue but, to my mind, that does not mean that the limited additional burden on this important issue should be excluded. The issue is therefore to be defined in the amended form as it was put forward by Mr. Hickman during the course of the hearing.
Issue Three
Vectura
defendants propose 1st October 2004. The
Glaxo
claimants propose 1st March 2003, some 18 months earlier. The rationale for the
Vectura
defendants' approach is set out in paragraphs 54 and 55 of the witness statement of Jeremy Blum dated 19th September 2018. It is not necessary for me to read those paragraphs into this judgment. The design of the product went through a number of stages. It started in March 2003 and initially led to what is described as the "first generation GyroHaler", the shape and colour of which are unlike the AirFluSal Forspiro product. It is important for the purposes of disclosure to appreciate that design process involved not just the shape and colour, but also centrally, the technique for the delivery of a measured dose of serotonin.
Vectura
defendants' assumption is that a date range commencing on 1st October 2004 will capture all documents relating to the design of the second generation product which has much closer similarities to the AirFluSal product.
Vectura
and to the possible gaps in disclosure that exist as between
Glaxo
and
Sandoz.
He also points to the fact that there was no agreement between
Sandoz
and
Vectura
until early 2005, thus logically
Sandoz's
disclosure is unlikely to include documents prior to this date.
vague
as that set out in Mr. Blum's witness statement where it is simply stated that an alternative design commenced "in October 2004". It seems to me inherently unlikely that there was a precise date, a clear line in the sand, marking the transition from one product to another. It is far more likely that there will have been a more gradual shift.
view
to living dangerously, that may well be a relevant matter for the purposes of this claim and therefore for disclosure.
Vectura
defendants by the extended date range. There is indeed no evidence to show that the burden will be excessive. Of course, it will increase the
volume of documents that will have to be reviewed, but there is no basis for concluding that it will do so disproportionately or add to costs excessively.