Glaxo Group Ltd v Genentech Inc.
| Jurisdiction | England & Wales |
| Judge | Lord Justice Mummery |
| Judgment Date | 31 January 2008 |
| Neutral Citation | [2008] EWCA Civ 23 |
| Docket Number | Case No: A3/2007/1305 |
| Court | Court of Appeal (Civil Division) |
| Date | 31 January 2008 |
[2008] EWCA Civ 23
Lord Justice Ward
Lord Justice Mummery and
Lord Justice Jacob
Case No: A3/2007/1305
HC07 CO0367
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
MR JUSTICE LEWISON
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Richard Arnold QC (instructed by Wragge & Co LLP) for the Appellants
Mr Daniel Alexander QC and Dr Justin Turner (instructed by Rouse Legal) for the Respondent
Hearing date: 3 rd August 2007
Lord Justice Mummery (giving the judgment of the court):
Introduction
At the end of the expedited hearing the court announced its decision that this appeal would be dismissed and that, as the appeal raised an important point of principle and practice, judgments would be put in writing and handed down later. Since then there have been further developments in the litigation taking the urgency out of the situation (see paragraphs 18 to 20 below).
The point of principle and practice arises in legal proceedings in the Patents Court running in parallel with proceedings about the same subject matter and between the same parties in the European Patent Office (EPO). In both sets of proceedings the validity of a European Patent granted under the European Patent Convention (EPC) was contested.
The general question is this: in what circumstances should the Patents Court exercise its inherent power to stay revocation proceedings pending the final outcome of the opposition proceedings in the EPO? The judge and the parties were agreed that this court should review the authorities on stay of legal proceedings and give general guidance on the discretion that is frequently invoked in the Patents Court.
The particular question is this: should the Court of Appeal interfere with the discretion of the judge? In this case Lewison J refused a stay of the revocation proceedings pending the final determination of the opposition proceedings in the EPO (including all appeals). The appeal is from his order dated 15 June 2007 dismissing the application by the appellants, Genentech Inc and Biogen Idec Inc (Genentech), for a stay of revocation proceedings brought by the respondent, Glaxo Group Limited (GSK).
GSK's action was for revocation of the UK designation of Genentech's European Patent No 1,176, 981 (the Patent), a second medical use patent, on the ground of invalidity. It is presumed to be a valid patent unless and until it is revoked. GSK was not alone in objecting to the validity of the Patent. On 31 May 2007 another action for the revocation of the Patent on the same grounds was brought against Genentech by Wyeth. The court was informed that Wyeth accepted that, if Genentech succeeded in staying GSK's proceedings, the Wyeth action should also be stayed.
The contested Patent was described as for “use of an anti-CD 20 antibody in the manufacture of a medicament for the treatment of rheumatoid arthritis in a mammal” (claim 1). GSK's interest in the patent arose from its trials for the development of an antibody, which GSK contended is different from Genentech's, is not disclosed in the patent and owes nothing to it. GSK contended that antibodies of the kind described in the Patent, such as rituximab, were available and used for therapy before the priority date. The Grounds of Invalidity relied upon consist of academic publications available to the public before the priority date. GSK proposed to call experimental and expert evidence at the trial of the action at which there would be contested factual issues.
Spurred by the need for commercial certainty GSK wanted to clear Genentech's patent out of its path as soon as possible. It issued opposition proceedings in the EPO. It then initiated the revocation action in the Patents Court.
GSK made good progress with the revocation action. Directions were agreed and the trial was set down for hearing in the Patents Court floating from 4 February 2008. GSK naturally wanted the trial to go ahead on that date. Genentech, as patentee seeking to protect its patent, understandably did not want the trial to take place as soon as February. Its preference was for the court to follow a course, which would effectively postpone a final decision on the contested validity of the patent, possibly for as long as another four years.
It was not surprising that Lewison J decided that the arrangements and agreed timetable for February's trial should not be disturbed and that it should go ahead as arranged. Nor was it surprising that Lewison J granted Genentech permission to appeal. He recognised that, irrespective of the prospects of success in the appeal, the application raised an important point of principle and practice. He said that
“The question of a stay of national proceedings pending opposition in the EPO arises frequently. The current practice of the Patents Court differs to some extent from the practice in commercial litigation.
Guidance from the Court of Appeal (as ratio rather than obiter) is needed.”
GSK's reason for wanting an early decision on the disputed validity of the patent was that it has plans to launch its potentially valuable rheumatoid arthritis therapy (ofatumumab) originally developed by its collaborator, Genmab A/S. The UK is likely to be a significant market for the product. GSK's pressing need was for certainty in making its commercial plans and its investment. The need was demonstrated to the satisfaction of the judge in GSK's evidence on the stay application. An early resolution of the disputed validity of the patent in the Patents Court would be more likely to produce some real commercial certainty than waiting years for a final decision in the EPO.
GSK argued that appellate interference with the judge's discretion would be unjustified. Lewison J had carefully and correctly applied the legal principles. He had rejected Genentech's stay application after the fullest possible discussion of what, in the light of all the conflicting considerations, would be the just course. He held that a stay of the revocation proceedings and the extended period of uncertainty that that would entail would not be just.
Genentech's position on the appeal was that the judge's decision on the justice of the case was flawed by errors of legal principle, compounded by misdirections on fact and law, and that this court should overturn his decision by granting a stay.
Genentech stressed that the whole basis of the court's jurisdiction to stay legal proceedings was the injustice, inherent in the waste of money, time and effort and in the consequent vexation inherent in the unnecessary duplication of legal proceedings. It was prima facie vexatious and an abuse of process for a claimant to bring two claims against the same defendant in respect of the same cause of action to obtain the same relief. Since the decisions of the House of Lords in cases such as The Spiliada [1987] AC 460 it had become easier for a defendant to obtain a stay of domestic proceedings in favour of actual or potential foreign proceedings. A stay will be granted if the court is satisfied that there is some other available forum, having competent jurisdiction, which is the appropriate forum being a place where the case can be tried more suitably for the interests of the parties and the ends of justice.
Many additional detailed points were made on the facts: GSK's opposition in the EPO had preceded its revocation action; there was nothing requiring a second set of proceedings to be brought in the UK; infringement of patent, which was admittedly outside the jurisdiction of the EPO and within the exclusive jurisdiction of the national courts, was not in issue in the revocation action; GSK could have made a claim for a declaration of non-infringement in the action, but had not done so; nor had GSK's action attracted any counterclaim by Genentech seeking quia timet relief for infringement of the Patent, which Genentech contended would have been premature.
The legal thrust of Genentech's case for a stay was that there was a presumption that GSK's revocation action was an abusive duplication of legal process by it. GSK was seeking the same relief in respect of the same cause of action against the same defendant as it was already seeking in the prior opposition proceedings in the EPO. The strong presumption in favour of a stay in such circumstances was well established by the leading authorities on forum conveniens generally and on the particular problem of parallel patent proceedings.
Genentech contended that the commercial certainty argument based on the revocation action was unconvincing, since only the final resolution of the EPO proceedings would secure for GSK the advantage of effective certainty in all of the States covered by the EPC. In dealing with GSK's complaint of damage flowing from the continuing delay in the EPO, the judge had misinterpreted the evidence and had wrongly treated the time that it would take to achieve finality in the EPO as a material factor affecting his discretion.
Before delving into the detailed background to the appeal, the judgment of Lewison J, the law and the rival submissions, we should mention a development notified to the court since judgment was reserved.
Post-hearing developments
On 13 September 2007 Genentech's solicitors informed the court that their clients had decided to consent to the revocation of the patent. On 24 September GSK's solicitors wrote to the court referring to the consent to revocation and...
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