Apotex Europe Ltd & Ors v Beecham Group Plc & Anor

Further evidence on appeal should be admitted where it would probably have an important influence on the result. Admission may be refused where the evidence would expand the appeal, require further witness evidence or effectively reopen the case, particularly where it is unlikely to affect the outcome. The court may take account of a party’s failure to conduct straightforward experiments or address the point at trial, even where the trial was expedited. Experimental work is not automatically reliable and repeatable merely because it was carried out by an employee of the opposing party.

The defendants appealed from a decision of Pumfrey J in patent proceedings concerning whether British patent application 407 anticipated or rendered obvious a process for producing paroxetine anhydrate. They sought to introduce experimental evidence from Dr Sidhu, conducted earlier in Canadian proceedings, concerning whether example 1 produced the anhydrate or the hemihydrate. The evidence had not been deployed at trial. The central issue was whether it should be admitted on appeal despite the likelihood of further evidence, expansion of the appeal and possible reopening of the case.

The application to introduce further evidence on appeal was dismissed. The appellants were ordered to pay the respondents’ costs.

1. Applicable consideration. The decisive question was whether the further evidence would probably have an important influence on the result. If it would, it should be admitted. The court concluded that the proposed evidence was not likely to have a material effect on the appeal.
2. Effect of admitting the evidence. Admission would probably expand the appeal substantially. Dr Cunningham would need to comment on the experiments, and Dr Sidhu might need to give evidence. The whole case could therefore be reopened, potentially requiring a new trial.
3. Assessment of the evidence. Dr Sidhu had not reasoned immediately to the use of a substantial quantity of isopropanol, as Dr Cunningham had done. He had also worked from different information. Existing evidence included similar Japanese experiments, and the trial judge had preferred Dr Cunningham’s evidence to that of Dr Lee. The proposed experiments therefore did not undermine the basis of the decision and appeared capable of confirming obviousness by another route.
4. Failure to deal with the matter at trial. The relevant point could have been investigated before trial. Dr Cunningham’s report had been available for about a month, the experiments were straightforward, and the appellants had sufficient resources to conduct them promptly. The expedited nature of the trial did not provide an adequate explanation for the omission.
5. Reliability. The court additionally noted that the experiments had not been independently inspected or repeated. Their presence in laboratory notebooks, and the fact that they were performed by an employee of the opposing party, did not automatically establish that they were accurate and repeatable.

• Court of Appeal (Civil Division): dismissed the application to adduce further evidence on appeal and ordered the appellants to pay the respondents’ costs.
• High Court, Chancery Division (Patents Court): decision of Pumfrey J from which the application arose.