1. Introduction

The High Court of Ireland, in the case of Bristol-Myers Squibb Holdings Ireland UnLtd Company v Patents Acts 1992 - 2019 (Approved) ([2023] IEHC 376), delivered a landmark judgment on June 26, 2023. This case revolves around two primary applications: one concerning the sufficiency of answers to interrogatories under Order 31, Rule 11 of the Rules of the Superior Courts (RSC), and the other addressing the form of the undertaking as to damages required for an injunction granted. The parties involved are Bristol-Myers Squibb Holdings Ireland UnLtd Company (BMS) and Teva, a pharmaceutical company challenging the validity of an Irish patent held by BMS.

2. Summary of the Judgment

The judgment is bifurcated into two significant parts:

• Part A: Deals with Teva's application under Order 31, Rule 11 RSC, seeking an order for viva voce examination due to perceived insufficiencies in BMS’s responses to specific interrogatories (§5.20 and §5.22).
• Part B: Addresses Teva's application concerning the form of the undertaking as to damages, advocating for its inclusion to cover related companies within the Teva group affected by the injunction.

In Part A, the court found BMS’s answers to the interrogatories insufficient due to inherent contradictions between the answers provided and the referenced documents. Consequently, the court ordered a viva voce examination to clarify these inconsistencies. In Part B, the court considered the necessity and proportionality of extending the undertaking in damages to related entities within the Teva group, ultimately granting the expanded form of undertaking proposed by Teva.

3. Analysis

3.1 Precedents Cited

The judgment extensively references several key precedents that shaped its legal reasoning:

• IBB Internet Services Ltd v. Motorola Ltd [2013] IEHC 541: Emphasized the rarity of court-ordered examinations of parties for interrogatory answers and the necessity for clear insufficiency.
• Lyell v. Kennedy [1884] 27 Ch.D. 1: Established that courts should focus solely on the sufficiency of interrogatory answers without delving into their truthfulness.
• Actavis Group v. Boehringer Ingelheim [2013] EWHC 2927 (Pat.): Discussed the scope and clarity required in cross-undertakings for injunctions, highlighting the need for reasonable certainty.
• Warner-Lambert v. Actavis [2015] EWHC 485 (Pat.): Reinforced the principles from Actavis, advocating for comprehensive cross-undertakings to prevent circumvention through corporate restructuring.
• Teva Pharmaceutical Industries Ltd v. Mylan T/A Mylan Institutional [2018] IEHC 324: Demonstrated consistent application of the principles regarding loss and cross-undertakings in injunction scenarios.
• Case C-688/17 Bayer Pharma AG v. Richter Gedeon (ECLI:EU:C:2019:722): Clarified the concept of "appropriate compensation" under the Enforcement Directive, reinforcing national courts' discretion in assessing damages.
• Nolan & ors v. Dildar Ltd & ors [2020] IEHC 243: Highlighted that undertakings in damages are not meant to be complete indemnities, aligning with the court's approach in the current case.

3.2 Legal Reasoning

The High Court's legal reasoning is methodical and anchored in statutory provisions and established case law. In Part A, the court assessed whether BMS’s answers to interrogatories were sufficiently clear and non-contradictory. The inherent inconsistencies between BMS’s responses and the referenced materials led the court to deem the answers insufficient, thereby justifying the order for a viva voce examination under O.31, r.11 RSC.

In Part B, the court evaluated Teva’s request to expand the undertaking in damages to cover related companies within the Teva group. By analyzing English case law, particularly Actavis and Warner-Lambert, and referencing the Enforcement Directive, the court concluded that extending the undertaking was appropriate. The court emphasized that the undertaking should be clear, not overly broad, and should cover loss simpliciter with the normal rules of causation applying, thereby preventing potential circumvention through corporate restructuring.

3.3 Impact

This judgment sets a notable precedent in two critical areas:

• Interrogatory Responses: Reinforces the court's willingness to scrutinize the sufficiency of interrogatory answers, especially when inconsistencies arise, and to order viva voce examinations as a remedial measure.
• Form of Undertakings in Injunctions: Establishes a framework for expanding undertakings in damages to encompass related entities, ensuring that injunctions do not inadvertently cause broader corporate harm. This aligns with European directives and ensures that undertakings are both fair and precise.

Future cases involving patent infringement and injunctions will likely reference this judgment, particularly regarding the formulation and scope of undertakings in damages and the handling of interrogatory responses.

4. Complex Concepts Simplified

5. Conclusion

The High Court of Ireland's judgment in Bristol-Myers Squibb Holdings Ireland UnLtd Company v Patents Acts 1992 - 2019 (Approved) represents a significant development in the realm of intellectual property litigation. By meticulously addressing the sufficiency of interrogatory answers and innovatively expanding the scope of undertakings in damages, the court has fortified the procedural safeguards surrounding injunctions in patent disputes.

This judgment underscores the judiciary's commitment to ensuring fairness and precision in legal proceedings, particularly in complex cases involving multinational corporations and intricate intellectual property issues. The emphasis on clear and non-contradictory interrogatory responses, coupled with comprehensive undertakings that account for corporate restructuring and related entities, ensures that injunctions serve their intended purpose without imposing undue or unforeseen burdens.

Moving forward, parties engaging in similar litigation will find this judgment a valuable reference point, guiding both the preparation of interrogatories and the formulation of undertakings in damages. The High Court's balanced approach, aligning domestic law with European directives, exemplifies a judicious blend of tradition and modernity in legal adjudication.