PATENT — Practice — Stay of concurrent proceedings — Parallel opposition and revocation proceedings in EPO and Patent Court — Defendants seeking stay of domestic proceedings — Guidance on court’s approach

Glaxo Group Ltd v Genentech Inc and another [2008] EWCA Civ 23; [2008] WLR (D) 21

CA: Ward, Mummery and Jacob LJJ: 31 January 2008

The approach to a stay in European patent cases differed from a stay in ordinary commercial litigation because the possibility of parallel validity proceedings in national courts and in the European Patent Office was inherent in the legal arrangements in the Convention under which the EPO was established.

The Court of Appeal so held in giving its reasons for dismissing an appeal on 3 August 2007 brought by the defendants, Genentech Inc and Biogen Idec Inc, against the decision of Lewison J [2007] EWHC 1416 (Pat) on 15 June 2007 dismissing their application for a stay of revocation proceedings brought by the claimant, Glaxo Group Ltd.

The claimant’s action was for revocation of the UK’s designation of the defendants’ European patent, on the ground of invalidity. The claimant issued opposition proceedings in the European Patents Office (“EPO”) and then initiated the revocation action in the Patents Court in England. Directions were agreed and the trial was set down for hearing in the Patents Court floating from 4 February 2008. The claimant wanted the trial to go ahead on that date. The defendants, as patentees seeking to protect their patent, did not want the trial to take place as soon as February. Their preference was 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.

MUMMERY LJ , delivering the judgment of the court, said that the point of principle and practice arose 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 Patents Office.

The legal thrust of the defendants’ case for a stay was that there was a presumption that the revocation action was an abusive duplication of legal process by it. The claimant 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 European Patents Office. The judge pinpointed the reason why the approach to stay in European patent cases differed from a stay in ordinary commercial litigation. The critical difference was that the possibility of parallel validity proceedings in national courts and in the European Patents Office was inherent in the legal arrangements in the Convention on the Grant of European Patents (1978) (“European Patents Convention”) under which the European Patent Office was established. Business needing to know where it stood was as important a feature of contested validity cases as it was of patent infringement cases. The claimant had a genuine commercial interest in revocation of the patent. It wished to know before it launched its product whether the defendants could rely on the patent to stop it from making or selling its product in the UK. The judge found that the claimant would suffer actual prejudice if there was delay in resolving the validity of the patent. Their Lordships did not think it was possible to fault the judge’s decision.

Appearances: Richard Arnold QC (Wragge & Co LLP) for the defendants; Daniel Alexander QC and Justin Turner (Rouse Legal) for the claimant.

Reported by: Geraldine Fainer, barrister