English Patent Court speeds up, reminds Mr Justice Carr in Celltrion v Biogen

The English Patents Court or the UPC - who will get
to trial first?

Always a fan of a case management decision, the AmeriKat was interested to see the decision in Celltrion Inc. v Biogen Idec Inc., F. Hoffmann-La Roche AG and Genentech Inc. [2016] EWHC 188 (Pat) come across her desk a few weeks ago.  The brief decision is about the most recent practice direction which aligns the English Patents Court regime with the fast-approaching UPC's stated intention that all cases will be done and dusted within a year.  As the AmeriKat was busy getting to grips with Mr Justice Arnold's decision in the latest Lilly v Actavis case (see here), she relied on the talented (and ever succinct)  Eibhlin Vardy (A&O), to analyze the decision.  Eibhlin reports:

“Justice delayed is justice denied” - and so we have the Patents Court Practice Statement of 7 December 2015 (issued by Arnold J as Judge in Charge of the Patents Court). This provides that the Patents Court “endeavours to bring patent cases on for trial where possible within 12 months of the claim being issued.” It supersedes the Practice Statement of 28 January 2015.

The recent case management decision of Carr J in Celltrion Inc. v Biogen Idec Inc., F.Hoffmann-La Roche AG and Genentech Inc. [2016] EWHC 188 (Pat) involved an application by Celltrion for an order that proceedings for the revocation of three patents be listed as two separate trials within twelve months of proceedings being served. Mr Justice Carr noted that the Practice Statement represents an important change to the management of patent cases.  Its introduction was motivated by the unfavorable comparison of the time it takes an English patent action to reach trial in the Patents Court as compared with other European jurisdictions - most notably Germany (the former being slower than the latter).

The Defendants claimed that Celltrion's application was premature on the basis that pleadings had not yet closed and, consequently, the issues between the parties remained uncertain. This was rejected by the Court, given that: (a) the defence was due in only 3 days; and (b) the Grounds of Invalidity were very similar to those already put forward in opposition proceedings and addressed in the EPO (in particular, there was only one additional piece of prior art in the English action). The judge also ordered a split trial, given that the priority dates of the patents were seven years apart. This meant that the Court would need to consider the common general knowledge at very different dates, which could prove confusing for expert witnesses were the proceedings to be tried together.

The revised Practice Statement gives litigants greater teeth for proactive trial listing, and in particular, requires parties to consider potential trial dates as soon as is reasonably practicable after the service of proceedings. Celltrion maintained that the Defendants had delayed in engaging with Celltrion's solicitors to list the trial. However, the judge refused to censure the Defendants, given the intervening Christmas period.

Carr J noted that the shortened timetable to trial may affect further interim orders. For example, it might be difficult for the Claimant to insist on wide ranging disclosure at the case management conference given that they had sought a listing within the twelve month window. 

The most controversial aspect of the Practice Statement - namely a trial listing without reference to the availability of instructed counsel - does not appear to have been in issue in this case.  It will be interesting to see if and how the court tackles any such complaint from a party in the future."