Court of Appeal
Published February 21, 2008
Glaxo Group Ltd v Genentech Inc and Another
Before Lord Justice Ward, Lord Justice Mummery and Lord Justice Jacob
Reasons January 31, 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 European Patent Convention.

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

Mr Richard Arnold, QC, for the defendants; Mr Daniel Alexander, QC and Mr Justin Turner for Glaxo.

LORD JUSTICE MUMMERY, delivering the reasons of the court, said that the point arose in legal proceedings in England running in parallel with proceedings on the same subject matter and between the same parties in the European Patent Office.

The claimant’s action was for revocation of the UK’s designation of the defendants’ patent EP (UK) No 1,176,981, on the ground of invalidity.

Spurred by the need for commercial certainty, the claimant wanted to clear the defendants’ patent out of its path as soon as possible. It issued opposition proceedings in the European Patent Office. It then initiated the revocation action in the patents court.

The claimant made good progress. Directions were agreed and the trial was set down for hearing floating from February 4, 2008. The claimant wanted the trial to go ahead on that date. The defendants, understandably, did not want the trial to take place as soon as that. 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.

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. The claimant was seeking the same relief in respect of the same cause of action against the same defendants as it was already seeking in the prior opposition proceedings in the European Patent 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 Patent Office was inherent in the legal arrangements in the European Patent Convention under which the European Patent Office was established.

Business needing to know where it stood was as an important a feature of contested validity cases as 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.

Solicitors: Wragge & Co LLP; Rouse Legal.

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