Permission to appeal in patent cases - farewell to the Pozzoli approach

Is permission to appeal granted more readily in patent cases? Should it be? These are the issues considered by the Court of Appeal in last week's decision concerning an application for permission to appeal in Teva UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG  [2016] EWCA Civ 1296.  The answers in short are: (a) not really; and (b) not anymore. 
 
The law on permission to appeal and the Pozzoli approach

CPR 52.3(6) provides for what seems to be a uniform and mandatory minimum standard for applications for permission to appeal:

"permission to appeal may be given only where—
(a) the court considers that the appeal would have a real prospect of success; or
(b) there is some other compelling reason for the appeal to be heard."

However, the heading to paragraph 52.3.13 in the current edition of the White Book [every litigation solicitor's bible, muses the IP Kitten] provides that "Permission to appeal may be granted more readily in patent cases".  The authority cited in support of this proposition is Pozzoli SPA v BDMO [2007] EWCA Civ 588, in which Jacob LJ stated at para 10:

"I would add this about permission to appeal in patent cases generally. Unless the case is very clear and can be understood sufficiently readily in an hour or so, the better course is normally for permission to be granted by the trial judge. For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge. Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if later it discerns that the case is indeed clear."

The IP Kitten bidding a festive farewell to the Pozzoli approach

The Court of Appeal, in the form of Mr Justice Floyd (with whom fellow patent heavyweight Lord Justice Kitchin agreed) noted that there appear to be two components to this statement.  The first is that in highly technical cases a trial judge ought to grant permission to appeal more readily.  The second is that in such cases, the fact of technical complexity may make an appeal judge more ready to grant permission to appeal where the judge has refused it. 

Background to the application

Boehringer Ingelheim's application for permission to appeal related to a decision of Morgan J to revoke Patent EP 1 379 220, concerning capsules to be used in a dry powder inhaler for the purpose of delivering a particular active ingredient (tiotropium bromide) to the lungs of a patient suffering from chronic obstructive pulmonary disease, or asthma.  The purported invention was primarily concerned with the material from which the capsules are made.   At first instance, the patent was held to be invalid on the grounds of obviousness, and the trial judge refused permission to appeal. 

 

The Court of Appeal specifically asked for oral argument from both parties as to whether the practice reported in the White Book based on Pozzoli is correct.  Counsel for both sides reported that whilst the practice in Pozzoli has never been disproved, it is not in fact applied by first instance patent judges. 

New CPR 52.5

In his judgment, Lord Justice Floyd observed that the civil procedural rules have moved on since Pozzoli was decided.  The new CPR 52.5 (which took effect on 3 October 2016) provides that the Court of Appeal will determine applications for permission to appeal on paper unless the judge considering the application on paper directs an oral hearing.  The judge must direct an oral hearing where the "application cannot be fairly determined on paper without an oral hearing" (see CPR 52.5(2)).   The new procedural rules enable the judge to direct the parties to focus on particular issues, and to direct the respondent to serve and file written submissions (see CPR 52.5 (4)(a) and (b)).  Lord Justice Floyd observed that the Court of Appeal is now in a good position to obtain the assistance of the parties.  "Under these rules, it would be wrong for a judge to give or refuse permission without being sure that there is, or is not, an arguable point, simply because of the technical or other complexity of the case.  It would not be fair to do so.  The procedural background is therefore different to that which faced this court in Pozzoli."  He continued: "the time has come to say that the technical complexity of the background is not a factor which trial judges should take into account in favour of granting permission to appeal.  For that reason, there is no justification, in granting or refusing permission to appeal, for treating patent cases any differently to any other cases."  And with that, the Court of Appeal bade a festive farewell to the Pozzoli rule:  "In my judgment, the approach in Pozzoli should no longer be followed". 

The Court of Appeal was unimpressed with the application for permission noting that the applicant was illegitimately seeking to deconstruct the judge's overall evaluative judgment on the issue of obviousness.  Permission to appeal was refused.