Experts slow down patent trial

The IPKat's sensitive nose has tracked down Baxter Healthcare Corporation and another v Abbott Laboratories and another [2006] EWHC 919 (Pat), currently available on LexisNexis' Butterworths All England Direct subscription service but, it seems, nowhere else. This is a Patents Court decision of yesterday's date from Mr Justice Pumfrey.

Back in December 2005, the court ordered Abbott to set out its case, after Baxter applied for a declaration of non-infringement and sought revocation of one of Abbott's patents. After the parties agreed that aspects of how Baxter made its fluoroether composition, sevoflurane, its formation and the impurities that were present in it, were all relevant to this dispute, Abbott applied for an order compelling Baxter to give more specific details of the product and process description that formed the subject of its action. A report from one of Abbott's experts later suggested that even more information should be obtained. Baxter said it needed time to investigate Abbott's request and sought adjournment of the trial.

The suggestion was made that (i) the possibility that fluorinated amines were present in Baxter's product was not only not the responsibility of Abbott but positively of Baxter's own doing and that (ii) the failure to disclose a certain chemical product report footnoted to the Abbreviated New Drug Application caused the late suggestion by Abbott's expert.

Pumfrey J granted the adjournment Baxter sought, ordering Abbott to pay the costs that had been wasted on the way.
* The report was necessary in order to eliminate certain routes for the production of amines, to determine the nature of the amine present. However, the disclosure of the report was not necessary to establish the possibility.

*Baxter could have time to determine whether amine impurities were of such a level that they could change the product description so as to specify their presence at a level at which it was accepted that their presence did not affect matters.
The IPKat would like to know more about this case. He feels that experts too often hinder the progress of litigation rather than assist it and fervently wishes that, to this end, judges would be more proactive in their exercise of case management powers.

Crystallise your fluorinated amines here

Fresh air in Leeds: now the truth can be told

From litigation to ADR, before ... (right)

John Lambert informs the IPKat that, for those who fancy a bracing change of scenery, there is a free seminar on Alternative Dispute Resolution in IP Disputes at BPP Law School, 2 Whitehall Quays, Leeds on 10 May 2006 between 14:00 and 17:00. Three top speakers are lined up:

* Ignacio de Castro (WIPO Arbitration and Mediation Center, Geneva) on international developments;

* Peter Back (UK Patent Office) on the new Patent Office mediation service and other initiatives;

... and after (left)

* Sara Ludlam (Keeble Hawson) who was, until she assumed her present partnership, an in-house legal advisor in Manchester. Sara will give the industry point of view.

This seminar will not be repeated, so it is worth re-arranging a diary and even travelling some distance. To find out why, see the post in John Lambert's blog. Space is limited to 25 persons so let John know as soon as possible.

The IPKat says ADR can be a breath of fresh air. Especially, adds Merpel, after applications like that made in Baxter v Abbott, above.


  1. Why does the IPKat care so much about the antics of experts (more likely the parties using their experts) in cases such as Baxter v Abbott? Where two large pharmaceutical companies are battling it out on difficult technical issues with millions of pounds of drug money at stake getting detailed expert opinions makes a lot of sense. In all other areas of law a similarly detailed approach is taken in similarly complicated and important cases.
    Of course, when the case is technically simple or not that much is at stake, then entirely different considerations apply. The difficulty the courts seem to have is in treating the simple cases simply.

  2. Hold on there! Of course getting detailed expert opinions makes sense, but it doesn't make sense for each side to train its own tame expert and then expect a judge, who is himself unlikely to be an expert, to determine which one is right (if either of them is). And how does the fact that there's lots at stake justify it? There's a lot at stake too when a pharma company is at odds with a university researcher whose pocket is not so deep.


All comments must be moderated by a member of the IPKat team before they appear on the blog. Comments will not be allowed if the contravene the IPKat policy that readers' comments should not be obscene or defamatory; they should not consist of ad hominem attacks on members of the blog team or other comment-posters and they should make a constructive contribution to the discussion of the post on which they purport to comment.

It is also the IPKat policy that comments should not be made completely anonymously, and users should use a consistent name or pseudonym (which should not itself be defamatory or obscene, or that of another real person), either in the "identity" field, or at the beginning of the comment. Current practice is to, however, allow a limited number of comments that contravene this policy, provided that the comment has a high degree of relevance and the comment chain does not become too difficult to follow.

Learn more here:

Powered by Blogger.