"I'll be back!" But he never went away: Lundbeck fails to terminate the Terminator

Arnold J's shortest judgment ...

“Hmm”, mused Merpel, “the lengths which some people will go to in order to secure the referee of their choice never ceases to amaze.  I know that this often happens in the sporting context with various coaches and managers accusing certain referees of incompetence, myopia, bad judgment and bias (and sometimes all of these together) — but is that beginning to find its way on to the legal playing field?” Merpel had just read the latest judgment of Mr Justice Arnold in the Patents Court, England and Wales, in Resolution Chemicals Limited v H Lundbeck A/S [2013] EWHC 3160 (Pat).  In this unusual case Lundbeck sought to persuade the judge that he ought to recuse himself [“sounds VERY nasty” says Merpel, “a bit like a cross between ‘excuse’, ‘refuse’ and ‘accuse’”, although she gathers it is the appropriate word in these circumstances”].   

Actually it was quite amusing how Lundbeck sought to do this.  At the time of the case management conference, or ‘CMC’ [this is the bit before the trial, explains Merpel a little cheekily, that generally determines who wins], the two specialists judges in the Patents Court, were Mr Justice Floyd and Mr Justice Arnold, both of whom are patent judges because they know things like how to splice a gene, change a light-bulb or split the occasional atom.  Mr Justice Floyd was debarred from hearing the case because, in 2007, while still at the bar, he had represented two claimants in an action for revocation of the patent in issue in the current proceedings (for those interested, the patent relates to the much-litigated escitalopram).  So the order on the CMC was that the trial should be listed before Mr Justice Arnold.  Lundbeck now sought to vary that order so that it now read “NOT before Mr Justice Arnold” [Merpel is hugely in awe of what three little letters can do].

Another relevant consideration was that the recently elevated Mr Justice Birss, who also knows how to do all those techie things) was similarly debarred.  Since the case had been given a “complexity rating” of 4 (5 being the highest) this was a trial which would normally be reserved to one of the specialist judges.  The effect of Mr Justice Arnold recusing himself would be that the case would have to go before one of the non-specialist assigned judges or a Deputy Judge [which may not be such a bad idea if you are one of those souls who believes that knowing about a subject deprives you of your objectivity when hearing a case about it …].

This hearing took place on 15 October 2013.  The trial had been fixed [in the most innocent meaning of that word] for 11 November 2013 or shortly thereafter.

Professor Jack

That is the background.  But what was quite remarkable were the reasons which Lundbeck put forward in support of their argument that the judge should recuse himself.  Resolution planned to call as one of their experts Professor Sir Jack Baldwin, a former Waynflete Professor of Chemistry at Oxford.  It turns out that Mr Justice Arnold studied Natural Sciences (Chemistry) at Magdalen College Oxford from 1979 to 1983 and that the Waynflete Chair, no doubt so comfortably occupied by the good professor, had been endowed by Magdelen.  More than that, and horror of horrors! It transpired that Professor Baldwin had supervised the no doubt fresh faced, eager Richard Arnold during his Part II year  [“Fresh faced in 1979?” exclaims Merpel. “but he’s still not much more than a kitten himself – he’s not due to retire till 2031”].

Now, comments Merpel, recusal applications are strange things.  Not only does the judge act as both the arbiter of law and the finder of facts (“judge and jury” in common parlance), he / she also acts as the witness of fact (!) because the judge is the one who is able to state what he / she recalls of the contact he / she has had with the individual in question.  Merpel suppose that you could get someone to cross-examine the judge but that would not be very dignified, would it?   Although in these days of public inquiries, when sitting and former Prime Ministers are put through the wringer, why not? 

Anyway, to return to the story, Mr Justice Arnold was placed in the position of having to set out over ten paragraphs all he could recall about his contact with Professor Baldwin.  As it turned out, although Professor Baldwin was his supervisor, the degree of contact seems to have been somewhat limited:

“My recollection is that I saw Prof Baldwin about once every four weeks for about half an hour. I think that Dr Ziegler was also present at most of these meetings. During the meetings, I updated Prof Baldwin on what I had done since our last meeting, and he gave me ideas for what to do next. On a day-to-day basis, I was supervised by Dr Ziegler and to a lesser extent by Dr Kelly. This recollection is supported by the fact that, in the acknowledgements to my thesis, I thanked Prof Baldwin for “his stimulating supervision” and Drs Ziegler and Kelly for “endless advice”.

My last contact with Prof Baldwin while at Oxford was a short interview to mark the conclusion of my Part II work at around the time I presented my thesis. Prof Baldwin offered me a place as a DPhil student despite the fact that I was predicted to receive (and did receive) a Second Class degree, but I declined this offer. After leaving Oxford in June 1983, I pursued a career in the law”.

So did this contact justify the judge recusing himself?  “Presumably”, says Merpel, “the basis of Lundbeck’s application was that the learned judge was so in awe of Professor Baldwin that he would sit there open-mouthed and adoring while the Professor gave his evidence, and not bring his finely honed mind to analyse the substance of what was being said.  But is this not the same judge who said in one of his judgments:

           “Finally, I would observe that this is the third time in six months that I have had to refer questions of interpretation of the SPC Regulation to the CJEU. I do so with considerable regret. That this should be necessary demonstrates the dysfunctional state of the SPC system at present. This is primarily due to the poor drafting of the SPC Regulation and to the failure of the European Commission, Council and Parliament to revise it to address the problems which have emerged. Matters have not been assisted, however, by the fact that the Court of Justice's recent case law interpreting the SPC Regulation has not provided the level of clarity and consistency that is required.”

Not a lot of deference there, then.  “Not for nothing is this learned judge known affectionately by the sobriquet “Arnie the Terminator”.

Indeed it would appear that, even as an undergraduate barely out of short trousers, our judge-in-waiting did not appear to have that high a regard for the Professor’s abilities since he stated in his judgment:

“My first and only contact with Prof Baldwin during Part I of the degree (the first three years) was when I attended a course of lectures on synthetic organic chemistry which he gave in the third year… I found the content of the lectures interesting even though they were poorly delivered….)” [Emphasis added]

Still, as might be expected, the judge took the suggestion most seriously.  He first quoted from the well-known statement of Lord Justice Jacob, as he then was, in Technip France SA’s Patent [2004] EWCACiv 381 as to the role of the expert in patent actions.  He then considered the way in which bias may affect a tribunal.  There was no suggestion of actual bias; rather, it was apparent bias that was the problem, hence the old maxim, attributed by the judge to Lord Hewart CJ in R (McCarthy) v Sussex Justices [1924] 1 KB 256 at 259, namely that “it is … of fundamental importance that justice should not only be done, but should manifestly and undoubtedly be seen to be done”.  So the question was whether a “fair-minded and informed observer” would conclude that, if the judge heard this trial, there might be an appearance of bias.

The judge then listed several factors which were present in this case.  These are too numerous to detail in this post.  But one of them is worth a mention:-

“The passage of time and my change in status. The fair-minded and informed observer would note that a little over 30 years have passed since my association with Prof Baldwin and that in that time I have successively become a barrister, QC and High Court Judge. The fair-minded and informed observer would appreciate that, as a Part II supervisor supervising a student, Prof Baldwin had some measure of authority over me; but that, as a judge assessing a witness, I would have a considerable measure of authority over Prof Baldwin” [emphasis added.]

The result was that the judge was satisfied that, since there was no risk of the “fair-minded and informed observer” concluding that the judge was likely to be biased, he would hear the trial as originally suggested.

Merpel muses that this appears at first sight to have been a strange application for Lundbeck to make.  The intellectual property bar in the UK is pretty small, and the patent bar even more so.  It is common for the judges to be very familiar with the advocates appearing before them; indeed it is almost inevitable since they are generally drawn from the main sets of IP chambers.  One suspects that many of their friends and acquaintances are drawn from the bar too and, having been in practice for the best part of 25 years, they will be well acquainted with the usual solicitors, patent attorneys and trade mark attorneys who are conducting cases before them.  It has never been suggested that this habitual professional intimacy would give rise to issues of bias or apparent bias. 

There is a difference: our judges are not being called upon to assess the veracity of the evidence being given by those individuals.  But occasionally solicitors and patent and trade mark attorneys do act as witnesses. Would a judge then have to recuse himself on the ground of personal knowledge of the witness in question?  Or would everyone take the view that it is well known that barristers (the professional species from which the judiciary is generally drawn) regard themselves as infinitely superior to solicitors and patent and trade mark attorneys anyway,so any suggestion that they would feel in any way in awe of them, or would accord them considerable deference, would be laughed out of Court [“Let’s save this issue for another day” says Merpel].

Professor Steve

But further digging produces some interesting background.  Part of the issue turns in the previous decision by Mr Justice Kitchin to uphold Lundbeck’s patent.  This decision turned on the interpretation of the so-called “Baldwin Rules”, these being rules of a stereochemical nature which are used to predict the relative facility of various ring-forming reactions and what the person skilled in the art would understand from those rules.  As might be anticipated the deviser of these rules was none other than Professor Baldwin.  Before Mr Justice Kitchin in 2007, Lundbeck had adduced expert evidence from Professor Stephen Davies, who at the time held, and still holds, the Waynflete Chair – he being Professor Baldwin’s successor.  It was his interpretation of the Baldwin rules that was accepted by Mr Justice Kitchin, as a result of which the patent was upheld. 

So far so good but, on 13 April 2009, the IPKat posted an items about the corresponding Dutch decision.  The post can be found here but, for those for whom the effort to click the link is too great, the most interesting bit of that post is a quote from Katfriend Jaap J.E. Bremer (BarentsKrans N.V.):

“... The Dutch Court clearly distinguished its judgment from the UK decision and the distinction was justified by new experimental evidence as well as expert evidence provided by Tiefenbacher.

In the UK case, Kitchin J heavily relied on the interpretation by Prof Davies, Head of Chemistry at Oxford University, of certain organic chemistry rules called the "Baldwin Rules", which were created by Davies' predecessor at Oxford, Prof. Baldwin. In the Dutch proceedings, Tiefenbacher managed to have Prof Baldwin act as an expert witness to explain his own rules. He had not been involved in the UK proceedings. This lead to a very interesting confrontation in the Courtroom between the current Oxford Chemistry Professor and his predecessor. The explanation of the Baldwin Rules by Professor Baldwin himself (to set straight what went astray in the UK) was a very important factor in getting the Dutch Court to distinguish the case from Kitchin J's decision". [Emphasis added]

Nevertheless Mr Justice Arnold specifically eschewed the notion that Lundbeck’s application was prompted by tactical considerations.  To quote from his judgment:

“Lundbeck has adduced evidence that its application is not motivated by tactical considerations. That evidence has not been challenged and I have no hesitation in accepting it”.

The last word rests, as ever, with Merpel.  “I have”, she says with a sly grin, “this lasting image that, as the learned judge gets up to leave the Court, he turns to Lundbeck’s Counsel, fixes him with a steely stare for a full ten seconds and then mutters quietly “I’ll be back!”.  Now THAT would give rise to an appearance of bias!”