No presumption against parallel proceedings in patent revocation cases

The last day of a cold, blustery January saw the Court of Appeal for England and Wales hand down its decision in Glaxo Group Ltd v Genentech Inc and Biogen Idec Inc. [2008] EWCA Civ 23. The judgment in this case was read by Lord Justice Mummery, with whom Lords Justices Ward and Jacob concurred.

Right: a second non-medical use - can retuximab also be used as laundry balls?

This was Genentech's appeal against the refusal of Mr Justice Lewison (noted here by the IPKat) to stay revocation proceedings in respect of the United Kingdom bit of a Genentech second medical use European patent. Claim 1 of the patent was for "use of an anti-CD 20 antibody in the manufacture of a medicament for the treatment of rheumatoid arthritis in a mammal". According to Glaxo (who were developing their own product, ofatumumab, and wanted a clear ride to market with it), antibodies of the kind described in the patent such as rituximab were available and used for therapy before the patent's priority date.

Wishing to blast Genentech's patent out of its path at the earliest opportunity, Glaxo both issued opposition proceedings in the European Patent Office (EPO) and then commenced this revocation action in the Patents Court. Genentech, like any prudent patent owner, applied for a stay of the revocation proceedings, which had been set down for trial, saying that they were an abusive duplication of the proceedings Glaxo had previously instituted in the EPO. Lewison J, expressing some unhappiness about the state of the law and rather inviting guidance from the Court of Appeal (his judgment virtually had the words "appeal me" stamped on it), refused the stay and Genentech appealed. Before the Court of Appeal Glaxo maintained that Lewison J had correctly applied the legal principles and had been entitled to hold that a stay of the revocation proceedings and the extended period of uncertainty that that would entail would not be just, given Glaxo's commercial interest in an early decision on the disputed validity of the patent in view of its plans to launch its own product.

The Court of Appeal dismissed the appeal. It the court's view

* it was legitimate for a person contesting the validity of a European patent to attack it both in an action for revocation in the UK courts and by opposition proceedings in the EPO and no estoppel principle ran counter to this.

* the European Patent Convention was silent (as was the relevant national legislation) concerning the exercise of discretion to stay national patent proceedings pending EPO proceedings, whether on the ground of forum non conveniens or otherwise. But the fact that the EPC was silent didn't mean it was irrelevant: it remained a factor in the exercise of an inherent domestic law power to stay national proceedings since it supplied the context in which judicial discretion was to be exercised.

* the risk of duplication of national proceedings and EPO proceedings was inherent.

* the Patents Court should exercise its discretion to achieve the balance of justice between the parties, having regard to all the relevant circumstances of the particular case. It was the discretion of the Patents Court and not the Court of Appeal.

* if the likelihood was that proceedings in the Patents Court would be resolve the dispute significantly sooner than the proceedings in the EPO, it would normally be a proper exercise of discretion to decline to stay the Patents Court proceedings.

The IPKat deeply regrets the almost ridiculously lengthy period of time that the EPO can take to resolve revocation issues, given the relatively short maximum life-span of most patents. The fact is that the speed at which the EPO deals with oppositions -- often hindered by the parties themselves, it is conceded -- encourages parallel litigation. A better-funded, better-resourced and highly proactive EPO could, by drastically accelerating the life-span of an opposition, make the wasteful and expensive incidence of (i) parallel proceedings in national courts and (ii) litigation over whether those parallel proceedings should be stayed a thing of the past.

Slightly sheepish apology: in the earlier version of this note, I managed to write "Glaxo" every time I meant "Genentech", and vice versa. This was, at least in part, the result of my having abbreviated them both as "G" in my notes.--The IPKat.