Patents: procedure and evidence 2003 developments

United Kingdom

Not possible to compel Patent Office to disclose information not within its records

Peter Prescott QC’s judgment in the case of of the begins “this is a very unusual case”. It is also a very unusual, and rather emotive, judgment. The case concerns an application by Mrs Haberman under section 118 of the Patents Act 1977 for an order that the Patent Office be compelled to disclose information not within its records.

Mrs Haberman was the well-known inventor of a baby-feeding cup. She applied for an initial UK patent on 8 April 1991 and, having developed the invention further in the following twelve months, sought to “regenerate her priority date” by abandoning the first application and making a further application on 7 April 1992. It is a requirement of the Paris Convention (Article 4) that the earlier application be abandoned before the filing of the second application. The case arose because there was no evidence of the precise date on which Mrs Haberman’s first application was abandoned and such information was not contained in the Patent Office’s records.

Whilst the Judge considered that the evidence suggested the application had been abandoned prior to the filing of the second application, he could not compel the Patent Office to disclose information that was not within its records under section 118 of the Patents Act 1977. Section 118 was not a procedure to enable a party to compel the Patent Office to “ascertain” facts - it was rather a procedure to require the Patent Office to “give” information in its possession.

Peter Prescott QC expressed some regret at this state of affairs - “it would be fairly obvious that I have a great deal of sympathy for Mrs Haberman. Her predicament is a disgrace. If I could help her, I would. But I cannot bend the law”. Earlier the Judge, quoting Robert Burns, stated “if we - the international patents system - were granted the gift to see ourselves through the eyes of a Mrs Mandy Haberman, what might we learn? Would we be pleased with ourselves? Going by this case, I do not think so. I am bound to say that Mrs Haberman would seem to have every right to complain”. The Judge also showed empathy with the pressures upon patent attorneys - “it is in the nature of the profession of patent attorney that he/she lives against a constant background of crucial dates which must not be missed. To miss even one is a nightmare. (For that reason I am glad that I did not choose that branch of the profession). Thus, in my experience, all firms of patent attorneys have standard procedures to try to ensure that it does not happen…that record staff are empowered to badger anyone, even the Senior Partner, is because the alternative is even worse - at best, constant anxiety and the loss of sleep. That is the reality of the situation.”

Experiments on Catnic-type questions of construction not allowed without Court’s permission in advance

Earlier in this UK Patents Review we report Laddie J’s considerations of the rules of construction in the decision of . In the case Laddie J also gave strong guidance on the appropriate conduct of litigation when dealing with issues of construction.

In the first place he directed that, in future, no experiments should be conducted going to Catnic-type questions of construction unless the Court has given informed permission for them in advance.

Laddie J expressed concern at the number of experiments and volume of evidence submitted by both parties on a simple issue of construction in a matter that had been ordered to come on as a speedy trial. Noting that the cost of patent litigation has been a source of concern in this jurisdiction for many years, Laddie J commented that the fact that it is not the Court’s task to intervene in relation to the question of fees did not relieve it of its duty to control the way in which litigation was conducted. “If our system allows parties to leave no stone unturned in the course of litigation, it is not really a surprise that they do so, particularly when the stakes are high, and even if some of the stones which they turn are no bigger than grains of sand. Whatever the position may have been in the past, it is no longer the case that the parties and their lawyers have a free hand to conduct an action as they like. Under CPR 1.2 the Court “must”seek to give effect to the overriding objective”. Laddie J made it clear that the Court should not allow the parties to conduct the litigation in a “bubble” where the only considerations are what the parties and their lawyers want. Rather, the Court will in future use its case management powers, including the possibility of imposing the new streamlined procedure, to control carefully the conduct of litigation.

Inflexible expert witnesses are less persuasive

There was substantial criticism of the expert witnesses in the case of . One expert for the Claimant, whilst describing himself as “an independent consultant” in fact only consulted for the Claimant’s lawyers in respect of the pharmaceutical product that was the subject of the litigation. Accordingly he was considered to be “loyal” to the Claimant and not willing to be “entirely dispassionate” between the parties – this was considered to be a serious fault in an expert witness. One expert for the Defendant was also alleged to have been a “hired gun”. Whilst the expert frequently gave evidence on behalf of the Defendant, he was not shown to always say what the Defendant wanted him to say and was not “in Apotex’s pocket”.

Generally, however, all of the experts were from time to time partisan and argumentative and “insufficiently flexible” to be willing to adjust their views so far as necessary to accommodate sound criticism of those views. Their evidence, when effectively acting as advocates rather than experts, was less persuasive to the Court.

The Judge also expressed surprise at the lack of evidence regarding the alleged infringing process. Samples at all stages of the process would have been of considerably more assistance to the Court than a great deal of speculation by experts which formed a substantial part of the evidence.

Second bite of the cherry successful - twice!

In the case of (see above) it was unusual that the Judge reversed an earlier finding on validity of the same patent in a different case. In the case of Laddie J had found Coflexip’s patent for the laying of flexible pipes and conduits on the seabed not to be invalid for obviousness and anticipation. This finding was upheld on appeal. On a subsequent action for revocation of the same patent, however, Rockwater were successful in invalidating the patent for obviousness and anticipation. Parties are usually very reluctant to challenge the validity of a patent a second time because of the risk of being ordered to pay costs on an indemnity basis. Rockwater was able to invalidate the patent by virtue of identifying a new prior art document that had not been submitted in the case of .

As a result of the decision in , Stolt, the unsuccessful party in the earlier action, sought a stay of the enquiry as to damages asserting “it would be monstrous if they have to pay an enormous sum in respect of a violation of a wholly non-existent right”. Whilst Jacob J felt this proposition had a lot to be said for it, he did not consider that it was right. In particular he held that Stolt were bound by the rule of cause of action estoppel and cited the “formidable”authority of . Notwithstanding Stolt’s arguments, this authority still stood and Stolt were required to pay damages. Jacob J noted that there were also policy considerations supporting this view. Otherwise, if a Defendant, having finally lost a patent action, knew that an application for successful revocation by another might get him off the hook of damages, he would have every motive for digging up better prior art and encouraging another to attack the patent. Of interest, it was noted that both parties agreed that the injunction against Stolt would not continue in force, although Jacob J stated that he was not entirely clear why, since if contempt for breach of injunction proceedings were brought, he did not see why the Defendant could say “but there is no patent” to that charge but not in the claim for damages. He did not consider the matter further.

Similar considerations also applied in the case of . The patent in-suit, relating to SmithKline Beecham’s pharmaceutical product, paroxetine hydrochloride anhydrate, had previously been the subject of a revocation action by BASF AG in which Pumfrey J had held a number of claims of the patent to be invalid, but two particular claims to be valid. This decision was upheld by the Court of Appeal last year. In the case, Pumfrey J again came to consider the validity of the patent and considered the impact of his earlier decision and the judgement of the Court of Appeal in the action. Pumfrey J stated that neither the evidence nor the judgement in the action was admissible in the present action save on questions of construction, being issues of law. It must be remembered that construction of documents is not the end of the question and that their disclosure is a question of fact upon which evidence is admissible. While Pumfrey J had come to a particular view on the evidence in the action he had to put this out of his mind for the purposes of the action and to base his findings upon the evidence advanced by the parties in that case. Pumfrey J concluded that the evidence in the case justified his departure from his conclusion in the case. He thus found the claims of the patent to be invalid for anticipation and obviousness (see above) and not infringed.

On a separate application SmithKline Beecham sought to use in the litigation documents that had been disclosed to it by in that litigation. Since the judge in both cases was the same, in the interests of justice, the Court of Appeal held that the documents should be allowed to be used in the proceedings in confidence.