When considering an application for an interim injunction pending an appeal, the court must not mechanically equate the existence of a real prospect of success on an appeal by a losing party with that of a good arguable case on the merits at the outset of proceedings prior to trial so that the granting of an interim injunction at the outset of proceedings before the parties’ rights had been decided would automatically justify an interim injunction pending an appeal.

Birss J so held in the Patents Court of the Chancery Division when refusing an application by the claimant, Novartis AG, for an interim injunction to restrain the defendant, Hospira UK Ltd, from launching a generic pending the claimants’ appeal against the decision of Arnold J [2013] EWHC 516 (Pat) on 15 March 2013 that its two European patents were invalid.

BIRSS J said that in no case had the court granted an interim injunction pending an appeal to restrain what would be infringement of a patent when the patent had been found to be invalid. Nevertheless, there were some points which can be derived from Erinford Properties Ltd v Cheshire County Council [1974] Ch 261 and Ketchum International plc v Group Public Relations Holdings Ltd [1997] 1 WLR 4 and Les Laboratoires Servier v Apotex Inc [2007] EWHC 1905 (Ch). Those were all cases concerned with an application after claimant had lost. There is another circumstance which was related to that, namely the case of a winning claimant who was faced with a defendant who had lost who sought to in some way alter or reduce the relief or stop it all together, which the claimant would ordinarily expect: see Kirin-Amgen Inc v Transkaryotic Therapies Inc (No 3) [2005] FSR 875. Birss J took from those cases that the grant or refusal of relief like that sought in the present proceedings was that it involved an exercise of the court’s discretion. Consideration of the risks of harm which could not be compensated in damages were highly relevant. However, what was also relevant was the nature of the proceedings. This was not a case in which the court had not yet been able to decide at a full trial on the parties’ respective legal rights. The rival cases had been heard at a full trial and a detailed judgment had been given. Once the court had given a ruling on the merits, of course a party needed a good arguable case on appeal before the court would be at all likely to grant an injunction pending full appeal. However, it would not be right to mechanically equate the existence of a real prospect of success on an appeal by someone who had lost at trial with the presence of a good arguable case on the merits at the outset of the proceedings a long way from trial so that one could say that if the facts were such that it would justify an interim injunction in the claimant’s favour at the outset of proceedings before the parties’ rights had been decided those facts would automatically justify an interim injunction pending the claimant’s appeal. The cases cited above described a situation in which an in injunction might be granted in favour of the appellant as being to prevent an appeal from being nugatory. That was not the standard applied in the usual proceedings before trial in an American Cyanamid sort of case: American Cyanamid Co v Ethicon Ltd [1975] AC 396. It was a reflection of the fact that after trial things were different. Jurisdiction could not be limited to an injunction to prevent an appeal from being nugatory. The point was simply that rather different considerations applied once a trial had taken place. On the present application, Birss J said that the appeal was plainly arguable but that he could not conclude who would win. He went on to say that there was a real risk of inflicting significant uncompensatable harm on either side by the grant or refusal of an injunction. He concluded that the risk should be borne by the claimant. Accordingly, the claimant’s application for an interim injunction was refused.