Eli Lilly & Co v Human Genome Sciences

In this matter I called the parties before me about what normally would be an entirely mundane matter, namely the date of hearing of an appeal. It does in fact raise important questions of procedure. It illustrates the need for parties to co-operate amongst themselves and to invoke the cooperation of the Opposition Division and/or the Boards of Appeal of the European Patent Office (EPO) so as to promote efficient and rational allocation of work between the EPO and national courts.

The dispute between the parties began with an opposition filed in the EPO on 16May 2006. On 5 July 2006 the opponents, (called the “claimants” in the English court), also started proceedings in this country for revocation of the UK patent. Proceedings in both the Opposition Division and in the High Court here proceeded with reasonable expedition given the above average complexity of the matters involved. The Opposition Division held its oral proceedings on 3 June 2008. As is its practice, it indicated at the end of the hearing what its conclusion was. It was that the patent would be revoked. On 31 July Kitchin J handed down judgment, also revoking the patent.

So far as this country is concerned, after the long vacation, permission to appeal was granted. The case entered the normal procedure for listing of appeals. The appeal date was fixed to be heard in late July. Neither side had told this court what was going on in the EPO. Neither side asked the EPO to speed up the proceedings. The Opposition Division took nearly six months to give its written decision which it did on 3 December 2008. I have little doubt it would have done so earlier if it had been told the matters were of commercial importance and reasons were needed earlier so as to bring forward the date for an appeal (time for which only runs from the giving of reasons). I have the general impression that those who were conducting the opposition were doing it in their own time.

When I found out about the parallel proceedings and the fact that there was an appeal being launched in the EPO I called Counsel for the parties before me in early January on an informal basis. This was to see whether it was possible for the appeal to be heard by the Board of Appeal of the EPO at an early date: if the decision were that the patent is to be revoked the whole appeal in this national court would be a waste of time.

The EPO, particularly the Board of Appeal, extended the hand of cooperation gladly and warmly. It offered a date in June if the parties were willing to co-operate in speeding things up. But the patentee says it is unable to cooperate to make that practical. I have a note from the patentee’s patent agent, Mr Andrew Sheard, who explains that he is too busy to be able to get the appeal documents in any earlier than shortly before 13 April at best, leaving the opponents only a few weeks to reply. There is unfortunately no procedure in the EPO for truncating time.

Mr Sheard has had, since he knew the result on 3 June 2008, nearly nine months to get his documents and material in - in a case which is said to be of immense commercial importance to his clients and to the other side. He has had, or the mans of having, full access to all the material before the High Court here. Yet he says he cannot be ready until the last minute and cannot speed things up.

I do not regard that as an acceptable way to conduct serious litigation. There is nothing within my power to speed up Mr Sheard. There is nothing the EPO can do to speed up Mr Sheard. All that can be done has been done, and all that can be done in the future is to ensure that no time indulgences are granted to him thereafter without very weighty cause.

Those who conduct serious litigation of important commercial matters, whether in the patent office or in the courts, must do so with all due expedition. For if they fail to do so, the commercial uncertainty produced itself is quite, quite unfair, unjust and contrary to the public interest. Although Mr Sheard says he cannot possibly manage to do any better, no alternative suggestion by using different counsel or patent agents has been offered by the patentees, even though they have in London some of the most experienced and able lawyers in Europe. I am afraid that I have the distinct impression that they are content with the commercial uncertainty. Mr Thorley, on his client’s behalf, denies it, but I regret to say that the impression remains the same. If early determination really, really mattered to the patentees, an earlier date would have proved possible.

The question then comes as to what I am to do. Should I keep the July date or should I move it? The EPO Board of Appeal which will be hearing this case sent me an e-mail. I asked them what would happen if the June date, which they are currently keeping open, was lost. I asked them for their best estimate for what they could do. This is their reply:

“…the short answer is early September. Let me explain that.

As always it depends on the parties. If they insist on the four months they are each entitled to for their written case, that takes us to the end of August and if we then prioritise the case, we could almost certainly ensure a hearing by the end of October and a decision by the end of November.

Alternatively, for each month of written case time each party agrees to forego, we can bring the hearing forward by two months but then it has to fit in with other hearings already fixed which for the three of us means, apart from the June dates we are holding open, early September would be the earliest.”

I would add the Boards’s postscript:

“On the first approach, we work faster but the parties don’t. On the second approach, we all work faster. Fast work, like hard work, never hurt anyone.”

I would agree with that.

It follows from that, being practical, one cannot be certain that there will be a decision of the Board before the end of the November. That reduces itself to the question before me: should I move the case from July to December? Mr Colin Birss QC, for the opponents/claimants frankly accepted that that, which would mean a delay in the result in this court (if it is necessary at all after the Board’s decision) until probably January, would not be too significant for his clients.

Given that both Kitchin J and the Opposition Division had held the patent invalid, there must be a real prospect that by moving the case to December it would never be heard here. It is currently set down in this court for five days, which is a lot of Court of Appeal working time which might be saved. In my judgment, given all those circumstances, the appropriate thing is for this case to be moved from the end of July to December.

In future parties who are litigating before the EPO and the courts here should inform both the EPO and our court of the position as early as possible – and should where possible ask the appropriate tribunal (either the EPO or the English court) to speed things up so as to avoid duplication of proceedings.

The parties are to liaise with the listing office as soon as possible for the date to be fixed, and I would suggest that they also cooperate with the EPO Board of Appeal about the fixing of a date as soon as possible.