Generics [UK] Ltd t/a Mylan v Yeda Research and Development Company Ltd and Another

Hearing date: 23 rd. February 2012

This appeal is from a judgment of Floyd J of 25 ^th November 2011, [2011] EWHC 3200 (Pat). It was made in an action between Generics (UK) Ltd (who trade under the name "Mylan") and Yeda Research and Development Company Ltd. and Teva Pharmaceutical Industries Ltd. Having heard the oral argument, we told the parties of the result, namely that the appeal would be allowed. In view of the urgency (the action is shortly to come to trial) we indicated that the injunction granted by the judge would be discharged upon final judgment and meanwhile it would be suspended (in that way time for appeal would not start running). These are my reasons for allowing the appeal.

In the action Generics seeks a declaration of non-infringement and revocation of Yeda's EP (UK) No. 0,762,888, under which Teva are exclusive licensees. The patent relates to a pharmaceutical called Copaxone, sales of which form an important part of Teva's business. The action commenced in March 2011 and the trial commenced on 14th May this year.

In February 2011 a senior in-house patent attorney with extensive experience of litigation (she has been concerned with 150 or so oppositions in the EPO) was employed by Mylan as its Director of Intellectual Property. Her duties were to be responsible for managing Mylan's European patent matters, including litigation, oppositions and prosecutions with respect to a portfolio of products. Her responsibilities included the conduct of the action and a corresponding action in France. Until Floyd J granted the injunction the subject of this appeal, Mylan's solicitors took their instructions from the senior in house pattent attorney. There is a further corresponding action in the US but she does not have the conduct of that.

From 2008 to January 2011 the in-house patent attorney for the Claimant was employed by Teva where she was responsible for oppositions in the European Patent Office. She was not concerned with any litigation concerning Copaxone. All she knew about it was that the product was being handled by a team in Israel. No one in her department at Teva had any involvement with Copaxone litigation.

Notwithstanding that, Teva claims that whilst working for it, the in-house patent attorney learned of confidential information about its Copaxone litigation. So Teva contends that in the circumstances the in-house patent attorney ought not to be doing any work for Mylan in the action. Floyd J acceded to that contention, granting an injunction that:

"[Mylan] shall cease to act by, or otherwise seek assistance or advice from, its Director of Intellectual Property, namely …, in relation to this action."

The application for the injunction came about in a somewhat indirect way in that neither the in-house patent attorney nor Mylan has been sued directly. It happened this way. By an application of 15 ^th November 2011 Mylan sought an order that their in-house patent attorney, subject to her signing a confidentiality undertaking, be given access to copies of the defendants' documents which had been disclosed as confidential. By a counter-application of 21 ^st November the injunction was sought.

Teva accepts that Mylan's in-house patent attorney is entirely honest. She said "I never received or obtained any confidential information (or indeed any information about patents or litigation) concerning Copaxone as a result of my employment with Teva." She also said:

"I also have no recollection of being copied in on any communications or being involved in any discussions on any aspect of litigation relating to Copaxone while at Teva. Indeed the first time I learned about any litigation concerning Copaxone was during my interview process with Mylan when Steven Flynn (who has overall responsibility for global IP at Mylan) asked me whether I had ever done any work on Copaxone at Teva."

Teva says she is mistaken; that there was some discussion about Copaxone litigation. It took the form of being copied in on some emails and an oral discussion with Dr Hausdorff, Teva's Associate General Patent Counsel who has responsibility for Copaxone. It is said that this communicated significant confidential information which, although Mylan's in-house patent attorney does not currently remember it, might be remembered, albeit subconsciously, and might be used against Teva in the action.

The Judge accepted that, saying:

"[17] I should make it absolutely clear that I do not consider that [Mylan's in-house patent attorney] is being at all untruthful in any of the evidence that she has given, but it is a matter of common experience that although one feels, or feels strongly, that one has no relevant information on a topic, one's recollection can subsequently be shown to be wrong. Indeed the way in which the evidence has gone in this case has suggested that [Mylan's in-house patent attorney's] initial recollection was at least to some degree incorrect and that she had been exposed, at least peripherally, to discussions concerning the Copaxone case.

[18] Mr. Turner submits that, rather like the case considered by Lightman J in In re a Firm of Solicitors, all that is involved here is the fact that [Mylan's in-house patent attorney] shared an office with those who were concerned with Copaxone and that there is not at present a sufficient identification of particular confidential information to justify the court's intervention.

[19] I have not found this an all together easy question to decide, but I have reminded myself that the threshold is not a particularly high one. It seems to me that communications of the type which I have considered are by their very nature confidential and privileged. The communications are not central to the litigation, with which this court is concerned, though they are, I think, relevant to it. I think there is a risk in the present case that if [Mylan's in-house patent attorney] continues to act on behalf of Generics her memory of events such as those to which I have referred, …, may be at the back of her mind and may, I suspect unconsciously, nevertheless in fact influence her strategy and conduct and the consequent instructions she gives in the case.

[20] I have therefore come to the conclusion, somewhat reluctantly, that the case is an appropriate one for the court to intervene by way of injunction. I have of course borne in mind that the right of a party to decide by whom it conducts its litigation is, absent the risk of misuse of confidential information, a very strong consideration, but it does seem to me that here is such a risk and accordingly I propose to protect the defendants by eliminating the risk by injunction."

It was common ground before the Judge that the applicable principles were those established in Prince Jefri Bolkiah v KPMG [1999] 2 AC 222. There was no argument about whether a patent attorney (the former name, still in statutory use, is patent agent) should be treated in the same way as if she were an employed solicitor. It was common ground that she should.

Before us, Mr Michael Bloch QC, advanced a number of grounds. Twelve points are listed in the grounds of appeal. They can be summarised into two broad groups. I do so in a different order from that in which they were advanced:

i) Assuming the Bolkiah principles apply, the information in respect of which there is said to be a danger of misuse was too nebulous to satisfy the test and in any event there was no realistic risk of Mylan's in-house patent attorney misusing it even subconsciously. The Judge was wrong in his assessment of the position.

ii) The Bolkiah principles do not apply here. They are limited to the provision of legal services (or their equivalent, such as those of accountants) by third party professionals. Different principles apply to former employees even if they are in-house lawyers or patent attorneys conducting litigation for their employers. Those principles are the conventional principles by which a former employee may not, post-employment, use the trade secrets properly so-called of his former employer. Barring orders of the sort granted in Bolkiah will not be granted: the most the employer can be granted is an injunction restraining use of the trade secret, and such an injunction will only be granted if there is use or threatened use or disclosure of that secret.

Mr Simon Salzedo QC for Teva submitted broadly:

i) Bolkiah principles apply whether the litigator was in or out-house;

ii) It was for the Judge to evaluate the facts. He had concluded there was a risk that the "information may, unconsciously, influence Mylan's in-house patent attorney's strategy and conduct and the consequent instructions she gives in the case." It was not for this Court to interfere unless the Judge had made an error.

iii) Even if Bolkiah principles do not apply, the in-house patent attorney of the Claimant's contract of employment leads to the same result.

Mr Bloch disputed that last contention, submitting that the contract terms added nothing but if they did...