Technical Matters And Procedure - Annual Patents Review 2017

This is the Technical Matters and Procedure chapter of Gordon Harris' Annual Patents Review 2017. For the other chapters of the review, please follow the links below or download the Annual Patents Review 2017 in full.

Introduction Infringement Validity Technical Matters and Procedure Competition Law, Settlement and Licensing Employee Inventor Compensation Summary and Conclusions 4. TECHNICAL MATTERS AND PROCEDURE AND EXPERT EVIDENCE

Dealing first with the case of Anan Kasei v Molycorp76 , this gave rise to an issue regarding disclosure.

Disclosure of experimental protocol

In a brief interim judgment, Birss J ordered Molycorp to give disclosure in respect of an experimental protocol. He said ([1]-[2]):

The fact that protocol may involve a variation from the steps in example 1 of '412 is not a reason why it does not fall within the earlier order. Therefore, it seems to me that since there is a proper case that this sort of material is in existence, it should be disclosed.

I quite understand, ultimately, your case is going to be that the protocol was developed by your expert Mr Brophy. Therefore this material may have much less or even no significance at all. However, that is a matter for trial.

The trend, supposedly, has been for less disclosure in intellectual property litigation generally, and patent litigation in particular in recent years. However, as has been evident from a number of cases this year, the judges are not afraid to order fairly substantial disclosure if they think it will further the course of justice, or, as in this case, merely ensure a level playing field, even if the issue itself is not likely to proceed much further.

Post-settlement judgment

Another interesting point arose in the case of Varian v Elekta77. This was a judgment of Birss J, but after the draft judgment was circulated, the parties settled the case and asked the judge not to hand down final judgment. However, the patent had been found invalid, so Birss J ruled that the public interest in knowing that the patent had been found invalid outweighed any private interests of the parties. Accordingly the judgment was duly handed down. It is not clear what effect that judgment had on the settlement itself.

Listing

In Chugai v UCB Pharma78, a case heard by Rose J, a technical point arose in relation to listing times.

In December 2016 Chugai had commenced the claim for a declaration that one of its products was not a product which would, but for the licence granted to them, infringe any claim of the defendants' patent, and thus that no royalty should be payable under a previously concluded licence.

The issue underlying their claim was whether their product infringed a US patent.

UCB had not yet served a defence but had issued an application for the claim to be set aside or stayed and a declaration that the court had no jurisdiction or should not exercise it, contending that infringement was inextricably linked with validity, including regarding the construction of the patent in the light of US prosecution history. UCB's application was listed to be heard in late April 2017.

Chugai did not want to wait for the outcome of the jurisdictional challenge before the trial of its claim was set. It wanted the setting of the trial window to take place as soon as possible in order to ensure that it took place within 12 months in accordance with Arnold J's Practice Statement of 7th December 2015.

UCB objected on the basis of the prospects of wasted costs in respect of the main claim, which they estimated could be as much as £500,000.

Rose J considered various previous authorities which dealt with relatively similar situations, and concluded ([20]):

What I take from this is that there are often good commercial reasons why the parties choose a jurisdiction to deal with infringement points that is different from the jurisdiction where the patent was granted. The choice of jurisdiction should not lightly be overridden just because there may be aspects of the dispute that arise on the operation of the licence agreement which might turn tangentially on the validity of the patent. That must have been in the contemplation of the parties when they agreed a choice of law clause and it should not be allowed to defeat that choice.

Rose J then concluded that it would not be right to let...