Foreign Decisions

There were a couple of decisions from the last several days that may be of interest:

  • AstraZeneca AB & Anor v KRKA dd Novo Mesto & Anor [2015] EWCA Civ 484The Court of Appeal in the UK upheld the award of £27 million damages in favour of a generic for an interim injunction that was ultimately dissolved for esomeprazole.
  • Garcia v. Google – The U.S. Court of Appeals for the Ninth Circuit, in an en banc decision (PDF), reversed its earlier panel decision and held that an actor in a controversial film was not entitled to a preliminary decision removing the film from YouTube on the basis that the law and facts did not clearly favour her claim to copyright and her showing of irreparable harm.
  • Commil USA, LLC v. Cisco Systems, Inc. – The United States Supreme Court held that a defendant’s belief regarding patent invalidity is not a defence to an induced infringement claim.


The introductory passage from Garcia, states:

In this case, a heartfelt plea for personal protection is juxtaposed with the limits of copyright law and fundamental principles of free speech. The appeal teaches a simple lesson—a weak copyright claim cannot justify censorship in the guise of authorship.

Bob Tarantino has an interesting discussion of Garcia in comparison to Canadian law on performance and moral rights.


In AstraZeneca, the brand had sought an interim injunction against the generic prior to its launch of a first generic. The Court recognized that the damages were associated with the lost advantage of being the first on the market:

This reinforced his view that the defendants would have enjoyed a considerable first mover advantage had they been able to launch Emozul one year earlier. In my judgment these conclusions had ample support in the evidence. For example, Mr Rowe from Ashton, Leigh and Wigan PCT described the position in 2011 as “game over”; and Mr Small from Norfolk PCT said it generated a “whole different context” and “negated the whole point of doing” switching. Even Mr Carlisle accepted that once esomeprazole was generically available, the desire to switch evaporated and that the prospect of achieving switching was “finished”.

It is interesting to compare this analysis with that of the Canadian courts and the “hypothetical world” of the Section 8 proceedings under the PM(NOC) Regulations.


The Court considered liability for inducing patent infringement, which the Court stated required finding that “the defendant knew of the patent and that the ‘induced acts constitute patent infringement”. The majority held that requirement related only to infringement, not to patent validity. For parties that believe a patent is invalid, the majority states, “First and foremost,
accused inducers who believe a patent is invalid have various proper ways to obtain a ruling to that effect.” and suggest a DJ action or inter partes review or ex parte reexamination at the USPTO.