Millennium Pharmaceuticals v Drug Houses of Australia: Patent Infringement & Injunctions

In two consolidated appeals, Millennium Pharmaceuticals, Inc. appealed the High Court's decision to strike out its claim against Drug Houses of Australia Pte Ltd for patent infringement and its denial of an injunction. The Court of Appeal of Singapore, on April 30, 2019, allowed the appeal against the striking out, finding that Millennium had a reasonable cause of action under reg 24(1)(a)(i) of the Health Products (Therapeutic Products) Regulations 2016. However, the court dismissed the appeal for an injunction, finding that damages would be an adequate remedy. The court awarded costs to Millennium.

1. Case Overview

1.1 Court

Court of Appeal of the Republic of Singapore

1.2 Outcome

Civil Appeal No 79 of 2018 allowed; Civil Appeal No 84 of 2018 dismissed.

1.3 Case Type

Intellectual Property

1.4 Judgment Type

Ex Tempore Judgment

1.5 Jurisdiction

Singapore

1.6 Description

The Court of Appeal allowed Millennium's appeal against striking out its claim, finding a reasonable cause of action for patent infringement. However, the appeal for an injunction was dismissed.

1.7 Decision Date

2. Parties and Outcomes

Party NameRoleTypeOutcomeOutcome TypeCounsels
Millennium Pharmaceuticals, IncAppellant, PlaintiffCorporationAppeal allowed in partPartial
Drug Houses of Australia Pte LtdRespondent, DefendantCorporationAppeal dismissed in partPartial

3. Judges

Judge NameTitleDelivered Judgment
Andrew Phang Boon LeongJudge of AppealNo
Tay Yong KwangJudge of AppealYes
Woo Bih LiJudgeNo

4. Counsels

Counsel NameOrganization
Suhaimi Bin LazimMirandah Law LLP
Yan ChongshuoMirandah Law LLP
Chow Jian HongMirandah Law LLP
Mok Ho FaiBird & Bird ATMD LLP
Kang Choon Hwee AlbanBird & Bird ATMD LLP
Tan LijunBird & Bird ATMD LLP

4. Facts

  1. Millennium Pharmaceuticals, Inc. is the Appellant and Plaintiff.
  2. Drug Houses of Australia Pte Ltd is the Respondent and Defendant.
  3. The case concerns patent infringement.
  4. The Respondent did not declare the existence of the Appellant’s two patents to the Health Sciences Authority.
  5. The Appellant sought an injunction to stop the Respondent from entering the Singapore market.
  6. The High Court struck out the Appellant's claim and denied the injunction.
  7. The Court of Appeal allowed the appeal against the striking out but dismissed the appeal for an injunction.

5. Formal Citations

  1. Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd, , [2019] SGCA 31
  2. Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd, Civil Appeal No 79 of 2018, Civil Appeal No 79 of 2018
  3. Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd, Civil Appeal No 84 of 2018, Civil Appeal No 84 of 2018
  4. Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte Ltd, HC/Suit No 1089 of 2017, HC/Suit No 1089 of 2017

6. Timeline

DateEvent
Teva, affiliate of Drug Houses of Australia Pte Ltd, involved in patent actions with Millennium Pharmaceuticals, Inc in Canada.
Health Products (Therapeutic Products) Regulations 2016 enacted.
HC/Suit No 1089 of 2017 filed by Millennium Pharmaceuticals, Inc against Drug Houses of Australia Pte Ltd.
Civil Appeal No 79 of 2018 filed by Millennium Pharmaceuticals, Inc.
Civil Appeal No 84 of 2018 filed by Millennium Pharmaceuticals, Inc.
Judgment delivered.

7. Legal Issues

  1. Patent Infringement
    • Outcome: The court found that the Appellant had a reasonable cause of action for patent infringement.
    • Category: Substantive
  2. Injunction
    • Outcome: The court dismissed the appeal for an injunction, finding that damages would be an adequate remedy.
    • Category: Procedural
  3. Striking Out
    • Outcome: The court allowed the appeal against the striking out of the statement of claim.
    • Category: Procedural

8. Remedies Sought

  1. Injunction
  2. Declaration

9. Cause of Actions

  • Patent Infringement

10. Practice Areas

  • Intellectual Property Litigation
  • Patent Litigation

11. Industries

  • Pharmaceuticals

12. Cited Cases

Case NameCourtAffirmedCitationJurisdictionSignificance
Millennium Pharmaceuticals, Inc v Drug Houses of Australia Pte LtdCourt of AppealNo[2019] SGCA 31SingaporeThis is the current case itself.

13. Applicable Rules

Rule Name
No applicable rules

14. Applicable Statutes

Statute NameJurisdiction
Patents Act (Cap 221, 2005 Rev Ed)Singapore

15. Key Terms and Keywords

15.1 Key Terms

  • Patent
  • Infringement
  • Injunction
  • Therapeutic product
  • Health Sciences Authority
  • Statement of claim
  • Reasonable cause of action
  • Moratorium
  • Registration
  • Damages

15.2 Keywords

  • Patent
  • Infringement
  • Injunction
  • Pharmaceuticals
  • Singapore
  • Appeal

17. Areas of Law

Area NameRelevance Score
Injunctions80
Civil Procedure75
Patents70
Therapeutic Products Regulation60
Administrative Law20
Corporate Law10

16. Subjects

  • Intellectual Property
  • Patent Law
  • Civil Procedure