Resolution Chemicals Ltd v H Lundbeck A/S

JurisdictionEngland & Wales
JudgeSir Terence Etherton,Lady Justice Hallett,Lady Justice Sharp,The Chancellor
Judgment Date25 November 2013
Neutral Citation[2013] EWCA Civ 1515
Docket NumberCase No: A3/2013/3031
CourtCourt of Appeal (Civil Division)
Date25 November 2013
Between:
Resolution Chemicals Limited
Claimant/Respondent
and
H Lundbeck A/S
Defendant/Appellant

[2013] EWCA civ 1515

Before:

THE CHANCELLOR OF THE HIGH COURT

Lady Justice Hallett

and

Lady Justice Sharp

Case No: A3/2013/3031

IN THE COURT OF APPEAL (CIVIL DIVISION)

ON APPEAL FROM CHANCERY DIVISION

Mr Justice Arnold

Royal Courts of Justice

Strand, London, WC2A 2LL

Richard Gordon QC, Miles CopelandandEmily MacKenzie (instructed by Wragge & Co) for the Defendant/Appellant

Hugh Tomlinson QC (instructed by Olswang LLP) for the Claimant/Respondent

Sir Terence Etherton The Chancellor
1

In these proceedings the claimant, Resolution Chemicals Limited ("Resolution"), seeks revocation of the Supplementary Protection Certificate SPC/GB02/049 ("the SPC") for escitalopram in the name of the defendant, H. Lundbeck A/S ("Lundbeck"), on the grounds of the alleged invalidity of the basic patent on which the SPC is based, namely, European Patent (UK) No. 0 347 066 ("the Patent").

2

This is an appeal against an order dated 22 October 2013 of Mr Justice Arnold, the effect of which in substance was to refuse an application by Lundbeck that he recuse himself from hearing the trial of the action which was due to commence in a window commencing on 11 November 2013.

3

The essence of Lundbeck's recusal application is that a fair-minded and informed observer would conclude that there is a real possibility that Arnold J would be subconsciously biased in his assessment of the evidence of Professor Sir Jack Baldwin FRS, formerly Waynflete Professor of Chemistry at Oxford University, who is to act as one of Resolution's expert witnesses addressing the issue of the validity of the Patent. Lundbeck maintains that the appearance of bias arises out of the association between the Judge and Professor Baldwin when Professor Baldwin became the Judge's research supervisor in Part II of the Judge's undergraduate degree studies in Natural Sciences (Chemistry) at Oxford University between October 1982 and May 1983.

4

In view of the proximity of the trial date, we announced our decision to dismiss Lundbeck's appeal immediately following the oral submissions of Mr Richard Gordon QC, for Lundbeck, and Mr Hugh Tomlinson QC, for Resolution, on 31 October 2013. We said that our reasoned judgments would follow in due course.

Background

The attack on the Patent

5

The general background to the current proceedings is set out in an earlier judgment of Arnold J on various applications in these proceedings given on 12 April 2013 ( [2013] EWHC 739 (Pat)) (an appeal from part of which was dismissed by the Court of Appeal on 29 July 2013: [2013] EWCA Civ 924) and in a judgment of Kitchin J in another set of proceedings for revocation of the Patent — Generics (UK) Ltd v H. Lundbeck [2007] EWHC 1040 (Pat), [2007] RPC 32.

6

In short, Resolution attacks the validity of the Patent on two grounds. The first ground is obviousness in the light of United States Patent No. 4,650,884. The second ground is obviousness in the light of an article entitled "Quantitative structure—activity in a series of selective 5-HT uptake inhibitors" by Allan J. Bigler et al published in the May-June 1977 edition of the European Journal of Medicinal Chemistry.

7

In determining those issues the court will have to consider whether certain steps were obvious to the notional "skilled person". The "man skilled in the art" is a hypothetical skilled technician who has a very good background technical knowledge — the so-called common general knowledge — but he or she is uninventive: see generally the description by Jacob LJ in Technip France SA's Patent [2004] EWCA Civ 381, [2004] RPC 46, especially at [6] to [15]. Expert evidence is adduced in cases on the validity of a patent to educate the court in the technology but also to assist the court on whether or not the relevant step would have been obvious to the notional skilled person having regard to the state of the art: Mölnlycke AB v Proctor & Gamble Ltd (No. 5) [1994] RPC 49 at 113 (Sir Donald Nicholls VC).

8

One of the matters in issue in the present case is what the skilled person would have thought about the applicability of "Baldwin's Rules". These are named after two papers written by Professor Baldwin. There is disagreement between the experts on that issue.

The procedural background

9

The present proceedings were commenced on 7 November 2012. On 24 January 2013 Roth J made an order which, among other things, gave directions for the trial of the claim. Paragraph 30 of his order provided as follows:

"30. The trial of this action shall be listed on an expedited basis before Mr Justice Arnold if available on the earliest possible date after 11 November 2013, with a time estimate of 8 days and pre-reading estimate of 2 days with a technical complexity rating of 4".

10

Patent actions are listed for trial in accordance with their technical complexity rated on a scale from 1 (simplest) to 5 (most complex). Cases with a technical complexity rating of 4 or 5 are listed before one of the two judges of the Patents Court who have science degrees and have specialised in intellectual property law throughout their career. Cases with a technical complexity rating of 1 – 3 may be listed before one of the other judges of the Chancery Division who have been assigned to the Patents Court who do not have that academic and professional background. At the time of Roth J's order there were two specialist patent judges, Floyd J and Arnold J. Floyd J was precluded from hearing the case because, when in practice at the Bar, he had represented one of the parties at the trial of the previous claim for revocation of the Patent which was heard by Kitchin J. It was for that reason that Roth J's order provided for the trial to be listed before Arnold J. Birss J was subsequently appointed a High Court Judge of the Chancery Division and is qualified to try patent actions with a technical rating of 4 or 5. He is, however, unable to hear the case due to a conflict of interests.

The Recusal Application

11

During the course of the hearing before Arnold J of certain applications on 14 March 2013 Resolution's counsel stated that Resolution had an expert opinion of Professor Baldwin. Arnold J commented that Professor Baldwin was his Part II supervisor. Counsel for Resolution stated that, at that stage, he could not say whether Resolution would be calling for Professor Baldwin, adding: "but I have no reason to think that he would not be prepared to give evidence". There was correspondence between the solicitors for the parties in July 2013, in which Resolution's solicitors stated that Resolution had been assisted by two experts, one of whom was Professor Baldwin, and that Resolution proposed to call a third expert to give evidence. On 19 July 2013 Resolution made an application for permission to call a third expert. That application was supported by a witness statement in which Resolution's solicitor referred to experimental protocols which Resolution had obtained from Professor Baldwin and Professor Gerard Coquerel and stating that it would be necessary to call both those experts to give evidence at the trial and that Resolution needed to call a further expert. On 30 July 2013 Norris J made an order by consent giving Resolution permission to call a third expert.

12

On 6 September 2013, pursuant to the directions order of Roth J dated 24 January 2013, Resolution formally notified Lundbeck of the names of its expert witnesses, one of whom was Professor Baldwin.

13

On 11 September 2013 Lundbeck's solicitors wrote to Arnold J requesting that he recuse himself from hearing the trial of the claim on the ground that his past connection with Professor Baldwin gave rise to a real possibility of apparent bias. That request was opposed by Resolution both on the merits and on the ground of waiver.

14

Accordingly, Lundbeck issued an application notice dated 30 September 2013 for a direction that the order of Roth J of 24 January 2013 be varied so as to provide that the trial of the action shall not be listed before Arnold J.

15

The principal evidence relied upon by Lundbeck in support of its application comprised (a) the Judge's disclosure at the hearing on 14 November 2013 that Professor Baldwin had been his Part II supervisor, (b) some publicly available information about the curriculum vitae of Arnold J, (c) some general information concerning Oxford University's chemistry course, explaining that Part II of the course consists of an academic year of research leading to an examined thesis, (d) a copy of the published Paper co-authored by Professor Baldwin and the Judge referred to below and (e) a copy of the rules for the appointment of DPhil examiners at Oxford University. Resolution's evidence in reply included a letter from Professor Baldwin stating that he had no specific recollection of Arnold J and setting out his general practices with regard to the Part II students he supervised and his comments on the Paper.

The Hearing of the Recusal Application

16

In advance of the hearing of the recusal application the Judge noted the following observations of Patten LJ in Re L-B (Children) [2010] EWCA Civ 1118:

"22. Where a judge is faced with an application that he should recuse himself on the ground of apparent [bias] it is in my judgment incumbent on him to explain in sufficient detail the scale and content of the professional or other relationship which is challenged on the application. The parties are not in the position of being able to cross-examine the judge about it and he is likely to be the only source of the relevant information. Without...

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