ASTELLAS PHARMA INC AND ANOTHER v. JACOBSON MARKETING LTD

HCA 521/2026

[2026] HKCFI 4124

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 521 OF 2026

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D E C I S I O N

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Introduction

1.  By summons dated 27 March 2026 (“the Summons”), Ps seek a springboard injunction against D (“the Springboard Injunction”) to restrain D from dealing with its pharmaceutical product known as “Enzacord 40 Capsules 40 MG” (“Enzacord”) for a period of 12 months commencing from 29 March 2026, i.e. until 28 March 2027 on the basis of P1’s exclusive licence of a Hong Kong Standard Patent (No. HK1112856) (“the Patent”).

2.  In the Summons, the Springboard Injunction sought is in the following terms:

“The Defendant be restrained, whether acting by itself, its director, officers, employees, servants, agents, representatives, subsidiaries, affiliates, sales distributors and retailers or entities directly or indirectly controlled by the Defendant, through any third parties, or any of them or otherwise howsoever, for a period of 12 months commencing from 29 March 2026, from:

(a) making, manufacturing, putting on the market, using or importing any product:

(i) which is the subject matter of the Patent, including but not limited to the pharmaceutical product(s) under the name of Enzacord registered by the Defendant with the Hong Kong Drug Office, Department of Health on 11 December 2025 (Hong Kong Registration No. HK68934) or other related products; and

(ii) any other pharmaceutical product containing Enzalutamide, i.e. 4-{3-[4-cyano-3-(trifluoromethyl)phenyl]-5,5-dimethyl-4-oxo-2sulfanylideneimidazolidin-1-yl}-2-fluoro-N-methylbenzamide, with the formular C₂₁H₁₆F₄N₄O₂S (collectively “the Products”)

(b) stocking any Products, whether for the purpose of putting it on the market (in Hong Kong or elsewhere) or otherwise.”

3.  The Springboard Injunction is the primary and major relief which Ps claim in the Amended Indorsement of Claim dated 19 May 2026 (“the AIC”).

4.  This is the substantive hearing of the Summons. D opposes the Summons. Ms Leung appeared for Ps and Mr Lo appeared for D.

Undisputed background facts

5.  P1 is a major Japanese multinational pharmaceutical company headquartered at Tokyo, Japan. It is the parent company of P2.

6.  P1 is the exclusive licensee in respect of the Patent which remained valid and in full force and effect until its expiry on 29 March 2026. The Patent provided exclusive rights to the active pharmaceutical ingredient Enzalutamide, which P1 has marketed its patent protected product in Hong Kong under the trademark Xtandi through P2.

7.  Xtandi is a high-profile medicine used as a treatment for various stages of prostate cancer, both in Hong Kong and worldwide.

8.  D obtained a registration (“the Registration”) from the Hong Kong Drug Office (“the Drug Office”), Department of Health (“DoH”) on 11 December 2025 for its pharmaceutical product known as Enzacord which contains Enzalutamide as its active ingredient.

9.  The chemical structure of Enzalutamide is 4-{3-[4cyano-3-(trifluoromethyl)phenyl]-5,5-dimethyl-4-oxo-2sulfanylideneimidazolidin-1-yl}-2-fluoro-N-methylbenzamide, with the formular C₂₁H₁₆F₄N₄O₂S. This renders Enzacord falling squarely within the scope of the claims of the Patent. Ps say that Enzacord was an infringement product of the Patent at the time when the Registration was granted.

An overview of Ps’ claim

10.  In the AIC, Ps’ claim against D is for causing loss by unlawful means. It is alleged that D knowingly or recklessly made a false representation (whether expressed or implied) to the DoH that, inter alia, Enzacord shall not and will not infringe the Patent, thereby directly interfering with the DoH’s freedom to register Enzacord and affecting Ps’ economic interests. D did this with the intention to cause price erosion and loss of market share of Ps’ Xtandi as the natural consequences.

11.  Ms Leung explains that the case of Ps is that when applying for the registration of Enzacord with the DoH, D knowingly or recklessly made a false representation that Enzacord shall not infringe and will not infringe any patent rights of other registered pharmaceutical products in Hong Kong including the Patent (“the False Representation”).

12.  The False Representation forms the very basis of Ps claim in causing loss by unlawful means.

13.  Briefly stated, Ps say that but for the False Representation, DoH would not have allowed the registration of Enzacord and D would have had to wait until the expiry date of the Patent to apply for the registration, i.e. March 2026. In such a case, the registration would only be approved some months after March 2026 and D could only deal with or deal in the Products when thereafter. Ps estimate that D’s registration would only have been completed by the end of November 2026. Ps contend that D now has obtained the registration prematurely on the strength of the False Representation and hence it has obtained an unfair competitive edge and/or a head start over Ps.

14.  Ps accept that there is no evidence that D has ever manufactured, made, put on market, used, imported, sold, offered for sale, or stocked any Enzacord in Hong Kong.

D’s position

15.  D denies any false representation ever made to the DoH. D confirms that up till now, D has never manufactured, put on market, used, offered for sale and stocked any Enzacord pending the determination of the Summons. D makes it clear that no sample of Enzacord was ever submitted to the Drug Office of the DoH.

16.  D contends that for the purpose of registration of Enzacord, D was not required to make any representation let alone declaration concerning any issue of patent infringement.

17.  D alleges that Ps’ application is groundless and is made in bad faith.

Applicable legal principles

18.  Ms Leung points out, and Mr Lo agrees, that the legal principles relating to springboard injunctions are accurately explained by Haddon-Cave J in QBE Management Services (UK) Limited v Dymoke and Ors [2012] IRLR 458. The following paragraphs in the judgment are apposite:

“240. First, where a person has obtained a ‘head start’as a result of unlawful acts, the Court has the power to grant an injunction which restrains the wrongdoer, so as to deprive him of the fruits of his unlawful acts. This is often known as ‘springboard’ relief.

241. Second, the purpose of a ‘springboard’ order as Nourse LJ explained in Roger Bullivant v Ellis [1987] ICR 464 is ‘to prevent the defendants from taking unfair advantage of the springboard which [the Judge] considered they must have built up by their misuse of the information in the card index.

242. Third, ‘springboard’ relief is not confined to cases of breach of confidence. It can be granted in relation to breaches of contractual and fiduciary duties …, and flows from a wider principle that the court may grant an injunction to deprive a wrongdoer of the unlawful advantage derived from his wrongdoing.

243. Fourth, ‘springboard’ relief must, however, be sought and obtained at a time when any unlawful advantage is still being enjoyed by the wrongdoer ...

244. Fifth, ‘springboard’ relief should have the aim ‘simply of restoring the parties to the competitive position they each set out to occupy and would have occupied but for the defendant’s misconduct’ … It is not fair and just if it has a much more far-reaching effect than this, such as driving the defendant out of business …

245. Sixth, ‘springboard’ relief will not be granted where a monetary award would have provided an adequate remedy to the Claimant for the wrong done to it …

246. Seventh, ‘springboard’ relief is not intended to punish the Defendant for wrongdoing. It is merely to provide fair and just protection for unlawful harm on an interim basis. What is fair and just in any particular circumstances will be measured by (i) the effect of the unlawful acts upon the Claimant; and (ii) the extent to which the Defendant has gained an illegitimate competitive advantage … The seriousness or egregiousness of the particular breach has no bearing on the period for which the injunction should be granted …

247. Eighth, the burden is on the Claimant to spell out the precise nature and period of the competitive advantage. An ‘ephemeral’ and ‘short term’ advantage will not be sufficient …” (emphases added)

19.  Mr Lo relies on OBG Ltd and Anor v Allan and Ors [2008] 1 AC 1 (which was cited by this court in Chan Chi Ming & Ors v Chen Chih Chiang [2025] 1 HKLRD 820) in which Lord Hoffmann set out the essential elements of the tort of causing loss by unlawful means as follows:

(1)  A uses unlawful means against the third party;

(2)  which interfere with that third party’s freedom to deal with B;

(3)  with an intention to cause loss to B; and

(4)  actually causing damages to B.

20.  As regards the element of unlawful means, Mr Lo helpfully refers to the following paragraphs in Clerk & Lindsell on Torts (24^th ed, 2023) at §§23-84 to 23-92:

“Subject to one qualification, acts against a third party count as unlawful means only if they are actionable by that third party. The qualification is that they will also be unlawful means if the only reason why they are not actionable is because the third party has suffered no loss (§23-85, citing Lord Hoffmann and agreed by Lady Hale and Lord Brown in OBG).

Those acts against a third party that are actionable by that third party are predominantly civil wrongs, that is torts and breaches of contract; so acts that are only unlawful in other sense, such as because they are crimes or regulatory infractions, will not, following OBG, count as “unlawful means” for the purposes of this tort. (§23-85)

… in order for conduct to constitute ‘unlawful means’ for this tort, the conduct must give rise to a civil cause of action by the third party or would do so if the third party had suffered loss as a result of that conduct.” (§23-86; citing Bram Enterprises Ltd v AI Enterprises Ltd 2014 SCC 12).

21.  On the other hand, in light of the identity of the Springboard Injunction now sought by Ps and the final injunction prayed for in the AIC, the threshold is different from the existence of a serious issue to be tried in the well-settled American Cyanamid principles. This court shall have more regard to the prospect of success of Ps’ claim, this being treated as a factor in the consideration of the balance of convenience: see New Sparkle Roll International Group Limited and Anor v Sze Ching Lau and Anor [2024] HKCA 336 per Kwan VP at §§51-52, referring to BMC Global Ltd & Anor v TOR Asia Credit Master Fund LP & Ors (unreported, HCA 2392/2016, 14.10.2016) per Chow J (as he then was) at §§35 to 39.

Assessment of Ps’ claim

22.  Ms Leung in her written submissions explains Ps’ case of the tort of causing loss by unlawful means in the following terms.

23.  She submits that the unlawful means consists of the False Representation made, either knowingly or recklessly, to the DoH via PSR 2.0, which DoH had relied on to grant the Registration on 11 December 2025.

24.  The alleged unlawful act directly interfered with the DoH’s regulatory freedom to decide whether to register Enzacord. Despite Ps’ formal compliant and request for deregistration made on 6 February 2026, the DoH had decided not to deregister or suspend Enzacord, thereby continuing to be influenced by the unlawful act on the part of D. The unfair competitive advantage in having Enzacord ready for immediate launch upon the expiry of the Patent thereby harming Ps’ economic interests.

25.  D and P2 are the only two certificate holders of registered pharmaceutical products in Hong Kong containing the active ingredient of Enzalutamide. D intended to take advantage of the premature registration of Enzacord, which causes direct loss to Ps over 9-15 months through price erosion and loss of market share. Ps’ lawful exclusivity in relation to drugs containing Enzalutamide is undermined.

26.  The claim of Ps is fraught with difficulties. First and foremost, Mr Lo points out that the False Representation is not borne out by evidence.

27.  To establish the False Representation, Ps rely on the “Tripartite Regime” that they claim effectively prohibits the commencement of a generic drug registration application while the relevant patent remains in force.

28.  The Tripartite Regime consists of (1) “the Terms and Conditions for the Use of Pharmaceuticals Registration System 2.0 V1.4 (version date: December 2021)” (“PRS 2.0 T & Cs”), (2)“Guidance Notes on Registration of Pharmaceutical Products/Substances” (“Guidance Notes”) and (3) Regulation 36(5) of the Pharmacy and Poisons Regulations, Cap 138A (“the Regulations”), which empowers the DoH to impose conditions on registrations of pharmaceutical products.

29.  For PRS 2.0 T & Cs, Ps rely on §§9.1(a) and 15.3. The former provides,

“You represent, warrant and undertake to the Government that any information, communication or material submitted to the Government through PRS 2.0 is true and accurate and not misleading, incomplete or false.”

30.  §15.3 provides,

“You represent, warrant and undertake to the Government that any information, communication or material submitted to the Government through PRS2.0 shall not and will not infringe the Intellectual Property Rights of any person.”

31.  §15.1 stipulates that Intellectual Property Rights means, among other things, patent, trademarks, service marks, design rights, copyrights, etc.

32.  §3.3 of PRS 2.0 T & Cs provides that users should make reference to the Guidance Notes.

33.  Ps contend that §10.2 of the Guidance Notes imposes an obligation (“Ensure Obligation”) on applicants for registrations in the following term:

“You are therefore reminded to ensure that your product does not infringe any patent right. Please see sections 73 to 75 of the Patents Ordinance (Cap 514) for further details. You should always consult your lawyer if you have any doubts on this issue.”

34.  Ps adduce the affirmation evidence of Mr Thomas Lam who is the Regulatory Affairs Lead of P2. Mr Thomas Lam explains that the Ensure Obligation is a mandatory affirmative duty to conduct a Freedom-To-Operate Analysis (“FTO Analysis”) on whether the product to be submitted for registration will infringe any patents that are still in force to avoid patent infringement. He claims that the FTO Analysis should cover not only the active ingredient of the subject product but also its manufacturing process, administration method, dosage form, etc. He goes further to say that in the absence of FTO Analysis, any representation made under PRS2.0 T & C would be reckless and incapable of being honestly given.

35.  The last element of the Tripartite Regime is the Regulations. Ps rely on Regulation 36(5) which provides,

“The (Registration) Committee may, subject to any conditions it thinks fit to impose, register a pharmaceutical product or substance by issuing to the applicant a registration certificate in the specified form and the certificate is valid for a period of 5 years from the date of registration on payment of the fee prescribed in Schedule 9.”

36.  In the Certificate of Registration of Enzacord dated 10 December 2025, it is expressly stipulated that the product (Enzacord) does not infringe the patent rights of other registered pharmaceutical products in Hong Kong (“the Registration Condition”).

37.  As confirmed by an email to the solicitors of Ps dated 11 February 2026 issued by the DoH, the Registration Condition is imposed on newly and renewed registered products pursuant to the policy implemented on 1 March 2016.

38.  Ps say that Enzacord is always a product infringing the Patent and the concept of patent infringement in the Tripartite Regime is not limited to the direct or indirect commercial use of the Patent restricted by the Patents Ordinance, Cap 514 (“the PO”). They contend that patent infringement also encompasses the situation where a pharmaceutical product falls within the scope of an active and valid patent before and at the time of the application and/or registration. This is not supported by any authorities.

39.  Mr Lo submits that D did not make any False Representation, express or implied, in the Tripartite Regime. This is the major dispute between the parties.

40.  For PRS 2.0 T & Cs, Mr Lo first refers to the introductory section in §1 and stresses that they govern the use of the website (PRS 2.0) operated by the DoH. It must follow that the terms therein cover the use of the website itself only.

41.  Mr Lo, therefore, submits that §15.3 covers information, communication or material submitted to the HKSAR Government through PRS 2.0 and not the subject pharmaceutical product applied to be registered (in this case, Enzacord) itself.

42.  I agree with his submission.

43.  It is necessary to read PRS 2.0 T & Cs, §15 thereof in particular, as a whole and understand its purposes.

44.  §3.1 makes it clear that PRS 2.0 is a website for submitting online applications for registration of pharmaceutical products or substances, change of registered particulars of registered products or substances and renewal of registration certificates pursuant to the Regulations and its user may use any of the services provided therein (“the Services”) in accordance with PRS 2.0 T & Cs.

45.  §3.3 provides that users should make reference to the Guidance Notes when using the Services in accordance with the terms in PRS2.0 T & Cs.

46.  §15 covers intellectual property rights. As referred above, §15.1 sets out the definition of the intellectual property rights.

47.  §15.2 concerns the ownership of the intellectual property rights in all the contents of PRS 2.0. Such intellectual property rights are expressly vested in the HKSAR Government.

48.  §15.3 concerns the ownership of the intellectual property rights in the information, communication or material submitted to the HKSAR Government through PRS 2.0. Such information, communication or material shall not and will not infringe the intellectual property rights of any other person.

49.  §15.4 provides that by the submission of the information, communication or material submitted to the HKSAR Government through PRS 2.0, the user grants a non-exclusive, royalty-free, transferable, perpetual and irrevocable licence to the HKSAR Government to use such information, communication or material for the purpose of providing the Services and all corresponding and related purposes for the functioning and monitoring of the PRS 2.0 by the HKSAR Government.

50.  Considered in its proper context, §15.3 does not refer to the intellectual property rights in the subject product. It merely relates to the information, communication or material submitted to the HKSAR Government through PRS2.0. It is an online submission and no pharmaceutical product can possibly be submitted through PRS 2.0.

51.  If §15.3 refers to the intellectual property rights in the subject product, it is inconceivable that the HKSAR Government would, by any chance, require a licence of such a nature to use the subject product to provide the Services.

52.  It appears to me that both §§15.2 and 15.3 concern the intellectual property rights in the contents appearing in PRS 2.0 and the submission by an applicant to PRS 2.0 rather than the subject product itself. If the subject product is also covered, there is no reason why it is not expressly said so in §15.3.

53.  It should be noted that there is another requirement for the information, communication or material submitted to the HKSAR Government through PRS 2.0 in §9.1. They must be true and accurate and cannot be misleading, incomplete and false. These requirements cannot be attributed to the subject product.

54.  PRS 2.0 is only a website through which applications for the Registrations are made online. §10.1 of the Guidance Notes makes it clear that the Pharmacy and Poisons Board (“the Board”) does not take into consideration of the factor of “patent right” while deciding on an application for registration of a pharmaceutical product/substance. It is pointed out that an applicant shall not overlook the issue of infringement of patent right. It then gives a reminder of the prohibited acts under sections 73 to 75 of the PO and by §10.2, applicants are advised to ensure that their products do not infringe any patent right.

55.  Ps rely on the evidence of Mr Thomas Lam to enlarge the scope of §15.3 to include the subject products of applications for registration. Mr Thomas Lam claims to have ample experience of submitting applications via PRS 2.0 and he maintains that the supporting materials required detailed disclosure of the product’s formulation (including the active pharmaceutical ingredient, Enzalutamide), stability data, proposed manufacturing process/method descriptions, quality specifications, labelling and other technical particulars. In other words, the dossier of the subject product is also included in §15.3.

56.  I can accept this so long as all these materials are capable of being submitted to DoH through PRS 2.0. This does not assist Ps, however. Such materials per se, or the submission of the same，cannot constitute an infringement of the Patent under sections 73 to 75 of the PO. Ms Leung does not explain how they can be an infringement.

57.  Ms Leung submits that infringement of the intellectual property rights of the Patent is not confined to the three said provisions in the PO. She is unable to identify other infringements outside the ambit of the PO that can be committed by the submission of the dossier of Enzacord.

58.  As rightly pointed out by Mr Lo, patents are creatures of statute and the exclusive rights enjoyed by the proprietor of a patent and his licensees are conferred by the PO. §10.2 of the Guidance Notes only refers to sections 73 to 75 of the PO. I cannot accept the submission of Ms Leung.

59.  Next Ms Leung argues that the submission of the application for registration of Enzacord alone constitutes a communication from D to the DoH. With respect, this submission is plainly untenable. If the entire application is counted as a communication, the inclusion of information and materials of the application in §15.3 is utterly otiose.

60.  I, thus, come to the conclusion that Ps’ reliance on PRS 2.0 T & Cs is misplaced. Enzacord cannot be regarded as information, communication or material within the meaning of §9.1 and §15.3 of PRS 2.0 T & Cs.

61.  Now I turn to the Guidance Notes. They are published by the Board. The current version is the November 2022 version and it is applicable to the Registration.

62.  §1.1 explains the function of the Guidance Notes. They are intended to outline the general requirements for registration of pharmaceutical products and should be read in conjunction with the current laws governing pharmaceutical products in Hong Kong, which include certain Ordinances and their subsidiary legislations. Remarkably, such Ordinances do not include the PO.

63.  §2.1 provides that under the Regulations, pharmaceutical products must be registered with the Board before they can be sold, offered for sale, distributed or possessed for the purposes of sale, distribution or other use.

64.  §12.1 contains express disclaimers and it reads,

“These Guidance Notes serve as a general guide to the applicant of new product/substance registration and shall not be regarded as the complete registration requirements or authoritative statement of the relevant laws or its interpretation on any particular case.”

65.  §12.2 further states that the Board reserves the right to revise the Guidance Notes at any time without giving prior notice.

66.  It is obvious that the Guidance Notes are explanatory in nature and, contrary to the submission of Ms Leung, they are not intended to independently impose any requirements for the registration of pharmaceutical products.

67.  The Ensure Obligation is just an inaccurate term coined by Ps. It is simply a reminder and advisory in nature. On a proper construction of §10.2 of the Guidance Notes, applicants are only reminded to ensure that their products do not infringe any patent right and they are referred to sections 73 to 75 of the PO. It imposes no obligation at all.

68.  I should make another important observation. The reference to the said provisions of the PO in §10.2 shows that Enzacord itself cannot be an infringement under the PO and D did not commit any infringement of the Patent.

69.  One thing is of note. In the supporting affirmation of Lam Koon Chi Patrick filed together with the Indorsement of Claim, Ps, mistakenly, relied on the obsolete version of the Guidance Notes issued in January 2016 (“the Old Guidance Notes”) to form the basis of their claim.

70.  Mr Patrick Lam refers to §15 of the Old Guidance Notes, which provides,

“You are therefore reminded to ensure that your product has not infringed and does not infringe any patent right, and are required to make a declaration relating to patent right in the application form for registration of pharmaceutical product. When the pharmaceutical product is approved by the Pharmacy and Poisons Board, it will be registered subject to the condition that the product does not infringe any patent right, such that it may be deregistered, or its registration suspended, when such condition is contravened. Please see sections 73 to 75 of the Patents Ordinance (Cap 514) for further details. You should always consult your lawyer if you have any doubts about your position in this regard.” (emphasis added)

71.  The part printed in bold does not appear in the current Guidance Notes. Those requirements were removed in other words.

72.  Mr Patrick Lam pointed out that given Enzacord was registered on 11 December 2025 when the Patent was still valid and in force, D should have made a false declaration pursuant to §15 of the Old Guidance Notes to the effect that Enzacord had not infringed and did not infringe the patent rights of other registered pharmaceutical products in Hong Kong. He went further to say that if D had not made the false declaration, the Registration would not have been granted.

73.  Obviously at the commencement of this action, Ps were oblivious to the abolition of the declaration requirement in the Guidance Notes. Their case was still premised on the Old Guidance Notes. It was only after the call-over hearing of the Summons when D raised objection to their application for an interim injunction that they changed their case from a false declaration to the False Representation.

74.  For completeness. I should add that I do not accept that in the absence of a FTO Analysis, any representation made in the application for the Registration would be at least reckless if not dishonest. It is not disputable that the Board does not take “patent right” into consideration in their approval of applications for registration: §10.1 of the Guidance Notes. The Registration only entitles D to make commercial use of Enzacord in Hong Kong and it is valid for 5 years. It does not prescribe when D should start dealing with Enzacord commercially. D is left to consider how to do so without infringing the Patent and the obvious way is to wait for its expiry.

75.  For the same reason, I do not accept that there is any breach of the Registration Condition. Absent any contravention of sections 73 to 75 of the PO, Enzacord does not infringe Ps’ rights of the Patent.

76.  However, in the first place, as submitted by Mr Lo, the Registration Condition was imposed only after the submission of D’s application through PRS 2.0. D did not make any representation to induce the Board to grant the Registration on the Registration Condition.

77.  I, therefore, am of the view that the Registration Condition does not assist Ps to establish the False Representation.

78.  Ps further rely on the evidence of Mr Lam Sum who is the Head of Patents, Greater China at Messrs. Evershed Sutherland, the solicitors for Ps. Mr Lam Sam handles correspondence with DoH for applications for registration of pharmaceutical products. By his 2^nd Affirmation, he exhibited two deficiency letters generated from other unrelated applications for registration handled by Ps’ solicitors in late 2025 (“the Deficiency Letters”). Certain parts of these Deficiency Letters were redacted for confidentiality reasons.

79.  In the Deficiency Letters, it can be seen that the DoH raised patent right issues and asked for non-infringement declarations. This is apparently contrary to the Guidance Notes. The DoH did not refer to any particular regulations or statutory provisions in the Deficiency Letters.

80.  I am unable to attach any weigh to these Deficiency Letters. The background facts leading to the issuance of these letters are totally unknown and I cannot surmise why the DoH said what it had said in the Deficiency Letters.

81.  In any event, the Deficiency Letters are unable to rebut D’s evidence that D did not make any non-infringement declaration to the DoH.

82.  Mr Lam Sum also gave an account of the telephone conversation between Mr Yim who is the Chief Pharmacist of the DoH and him on 4 March 2026. Mr Yim told him that had the Drug Office been aware of the existence of the Patent, the generic product would not have been registered.

83.  Whilst I do not have serious doubt about Mr Lam Sum’s recollection, I am not inclined to attach any weigh to what Mr Yim purportedly said over the phone. I do not know whether Mr Yim would maintain the same position if he were asked to give evidence for Ps. There is no official statement emanating from the DoH to confirm the validity of Mr Yim’s assertion.

84.  In any event, there can be no falsity in the representation that Enzacord had not infringed and did not infringe the Patent or any patent right even if it had been made at the time of the application.

85.  There is no allegation, let alone cogent evidence that, up till now, D has already committed any acts in contravention of sections 73 to 75 of the PO.

86.  I accept Mr Lo’s submission that, as a matter of law, making an application for the Registration cannot constitute an infringement of the Patent. He helpfully refers to The Upjohn Company v T.Kerfoot & Co. Ltd. FSR [1988] 1.

87.  In that case, the defendants applied to strike out the plaintiffs’ claim of patent infringement. The plaintiffs were the proprietors of a patent of a pharmaceutical product and the defendants applied to the Department of Health and Social Security for product licences. The plaintiffs said that such applications were an infringement of their patent and alleged that the defendants had supplied to the authority the product data relating to their pharmaceutical product.

88.  Whitford J (at p.7) held that it was perfectly true that it could be said that the making of an application for a product licence could amount to a step towards a commercial use but it cannot be said to amount to an infringement. The plaintiffs’ claim was struck out as disclosing no reasonable cause of action.

89.  By the same token, D’s application for the Registration through PRS 2.0 cannot be an infringement of the Patent.

90.  Ms Leung made an admirable effort to distinguish Upjohn Company from the present case. Her effort was futile and the differences that she highlighted to this court are immaterial.

91.  I am of the view that there is no evidence that D has ever infringed the Patent by any means. There is no falsity in any of D’s representation made to the DoH whatsoever.

92.  Absent any unlawful act established by evidence, Ps’ claim against D is unmeritorious, to say the least. It is necessary to consider all other elements of the tort of causing loss by unlawful means in any detail.

93.  I merely have to state my agreement with Mr Lo that the second element of the tort, i.e. interference with the freedom of the DoH to deal with Ps, is glaringly missing.

94.  In the AIC, Ps’ case is that D made the False Representation directly interfering with the DoH’s freedom to register Enzacord and affecting Ps’ economic interests. This complaint cannot constitute the element of interference since it is about the DoH’s dealing with D rather than Ps in its application for the Registration.

95.  Ms Leung then submits that the unlawful act directly interfered with the DoH’s regulatory freedom to decide whether to register Enzacord and despite Ps’ formal complaint and request for deregistration made on 6 February 2026, the DoH decided not to deregister or suspend Enzacord.

96.  I cannot accept her submission. The alleged False Representation cannot possibly have caused any interference with the freedom of the DoH to deal with the subsequent formal complaint and request of Ps.

97.  This deficiency of the claim of Ps further reinforces my belief that the basic requirement of a springboard injunction is not met. I need not go further to examine the merit of the remaining elements of Ps’ claim.

98.  As a last resort, Ms Leung submits that this court has the jurisdiction to grant injunctive relief regardless of the existence or the non-existence of an underlying cause of action between the parties under section 21L of the High Court Ordinance, Cap.4. She cites the recent decision of the Court of Final Appeal in Sir Elly Kadoorie & Sons Ltd v Samantha Jane Bradley [2026] HKCFA 2 to support her contention.

99.  I have no doubt that in appropriate circumstances the court may exercise its discretion to grant an injunction to preserve the status quo pending the determination of a claim. However, on the facts of this case, I am unable to discern any inappropriate acts committed by D and the only thing D has done thus far is its successful application for the Registration. I am not convinced that the Springboard Injunction should be imposed on D.

Conclusion and order

100.  For the reasons given, I come to the conclusion that the sole cause of action of Ps in this action is devoid of merits. I am far from persuaded that Ps could establish the False Representation. That being my conclusion, I do not find it necessary to deal with other grounds advanced by Ms Leung on behalf of Ps. Such grounds can hardly improve Ps’ case.

101.  I am driven to the conclusion that I should not exercise my discretion to grant the Springboard Injunction in the circumstances. The Summons falls to be dismissed accordingly.

102.  On the issue of costs, Mr Lo has in his skeleton submissions made detailed submissions on both the liability and quantum of costs. He submits that the Summons was issued and the evidence in support was adduced on a wrong basis. It even led to an application for an interim injunction at the call-over hearing on 9 April 2026.

103.  Mr Lo further complains about material non-disclosure in the supporting affirmations of Mr Thomas Lam and Mr Lam Sum.

104.  On this basis, Mr Lo asks for indemnity costs up to 9 April 2026 and therefore costs to be taxed on a party to party basis.

105.  I have not heard Ms Leung’s submission on costs.

106.  In the first place, I see no reason why costs should not follow the event. I make an order nisi that costs of and occasioned by the Summons be paid by Ps to D, including all costs reserved, to be taxed if not agreed.

107.  As regards the basis of taxation, I am not persuaded that the conduct of Ps justifies indemnity costs. I find Ps’ application to be misguided but I am not sufficiently convinced that the application was made in bad faith. The call-over hearing was inevitable anyway and the substantial part of the arguments advanced for the purpose of the interim injunction application was reused at the substantive hearing of the Summons.

108.  In the premises, I order that costs payable by Ps to D should be taxed on party to party basis.

109.  Mr Lo has very properly attached D’s Statements of Costs of D to his written submissions for the purpose of summary assessment.

110.  I agree that summary assessment is appropriate in this case. I have perused the Statements of Costs. I shall only take a broad brush approach and avoid a mini-taxation.

111.  I appreciate that this matter is of some complexity but it does not involve significant factual disputes. Not much investigation has to be conducted by D to prepare its opposition to the Summons.

112.  I shall start with counsel fee. I believe a grand total of HK$380,000 would be appropriate.

113.  For the legal fees of Ps’ solicitors, I would allow 50 hours of Ms Law’s charge and 25 hours of Ms Luk’s charge. I round it up to HK$325,000 to include all other charges.

114.  Thus, I make an order nisi that Ps should pay D HK$705,000 as its summarily assessed costs.

115.  It remains for me to thank Ms Leung and Mr Lo for their helpful assistance.