Glaxo Group Ltd v Genentech Inc & Anor

In parallel proceedings concerning a European patent, the court has a presumption, although not a strong one, in favour of a stay of national proceedings pending EPO opposition proceedings. The ultimate question is where the balance of justice lies.

The court must weigh duplication, costs, possible amendment of the patent, undertakings, the likely duration of the EPO proceedings, delay, prejudice, commercial certainty and the value of an early national judgment. The absence of infringement proceedings is relevant but not decisive. A stay should not be ordered merely because the EPO proceedings concern the same patent or because the stay would avoid duplication.

Genentech and Biogen Idec held a European patent designating the United Kingdom for the use of an anti-CD20 antibody in treating rheumatoid arthritis. Glaxo Group challenged the validity of the UK designation in the Patents Court on grounds including anticipation, obviousness, added matter and insufficiency.

Glaxo had also opposed the patent in EPO opposition proceedings. Genentech applied to stay the English revocation claim pending the EPO proceedings. The central issue was whether, having regard to the patent-specific authorities and the anticipated delay, justice required a stay.

1. The court refused the application for a stay. The English proceedings were to proceed to trial.
2. The court’s inherent jurisdiction to stay proceedings was recognised by Supreme Court Act 1981, section 49(3), and CPR Part 3.1(2)(f). The ordinary principles concerning duplicated proceedings and forum non conveniens could not be applied directly to parallel EPO and national patent proceedings.
3. Patent proceedings required a more flexible approach. European patents operated territorially; the EPO could not decide infringement; opposition proceedings automatically affected all designated states; an EPO decision upholding a patent did not necessarily prevent national revocation; and commercial certainty was particularly important where an invalid patent could delay innovation.
4. The correct approach was to begin with a presumption, though not a strong one, in favour of a stay. The party resisting the stay had to overcome that presumption. The decisive question remained the balance of justice, assessed by weighing all relevant circumstances.
5. A stay would avoid some duplication and the possibility of amendment in the EPO was a relevant juridical advantage. Those factors received limited weight on the facts. The absence of infringement proceedings was relevant, but it did not justify a rule requiring exceptional circumstances before refusing a stay.
6. The likely EPO delay was substantial. The national trial was fixed for February 2008, whereas final EPO resolution might not occur until 2011 or 2012. The delay threatened commercial decision-making and could affect expenditure of approximately US$80 million before launch. This was the most important factor against a stay.
7. The undertakings offered by Genentech did not adequately protect Glaxo because they preserved the possibility of a later injunction and did not confine financial relief to a reasonable royalty. The balance of justice therefore favoured allowing the English claim to proceed.
8. The judge added that the patent-case practice had developed largely from obiter observations and might warrant definitive examination by the Court of Appeal.

First-instance decision. The judgment does not state any prior appellate decision in this litigation.