Glaxo Group Ltd v Genentech Inc & Anor

When national patent-validity proceedings run concurrently with opposition proceedings in the European Patent Office, duplication alone creates no presumption that the national proceedings should be stayed. The court must exercise its wide discretion by balancing justice in the particular circumstances.

The time required by each forum to provide commercial certainty will usually carry the greatest weight. Where the Patents Court is likely to determine validity significantly sooner, it will normally be proper to refuse a stay. The interests of the parties and the public favour resolving uncertainty about registered monopoly rights. An appellate court should interfere with the Patents Court’s evaluation only for an error of principle or a plainly wrong decision.

Genentech Inc and Biogen Idec Inc appealed against Lewison J’s refusal to stay proceedings brought by Glaxo Group Ltd to revoke the UK designation of a European patent. Opposition proceedings concerning the same patent were pending before the European Patent Office. The decision below was reported as [2007] EWHC 1416 (Pat).

The appellants argued that the national proceedings were duplicative and prima facie vexatious. Glaxo sought an earlier determination because delay would prejudice its plans to launch a rheumatoid arthritis therapy in the UK. After the appeal hearing, Genentech consented to revocation of the patent, but the court supplied written reasons because the stay issue remained important to the parties and patent practice generally.

The central questions were when parallel national validity proceedings should be stayed pending final EPO opposition proceedings, and whether the Court of Appeal could interfere with the judge’s exercise of discretion.

1. Appeal dismissed. Lewison J made no error of legal principle and was entitled to allow the revocation action to proceed. The later consent to revocation removed the urgency but did not remove the need to provide reasons.

2. The inherent power preserved by section 49(3) of the Supreme Court Act 1981 permits a stay whenever the court thinks fit. This confers the widest possible discretion. It must be exercised to achieve the balance of justice after considering all relevant circumstances in their proper context. No exhaustive or universally weighted checklist is possible.

3. The discretion belongs to the Patents Court. The Court of Appeal should intervene only where the judge has erred in principle or reached a plainly wrong decision. Experienced Patents Court judges should otherwise be left to manage patent litigation according to their specialist assessment.

4. The European Patent Convention and the Patents Act 1977 contain no express provision for an automatic or discretionary stay, but they condition the exercise of the domestic power. Parallel EPO and national validity proceedings are inherent in the European patent system. National courts have exclusive jurisdiction over infringement and concurrent jurisdiction with the EPO over validity. Duplication therefore creates no presumption, without more, in favour of a stay.

5. The time each forum will require to produce meaningful certainty will usually be the most significant factor. The parties and the public have legitimate interests in promptly resolving uncertainty about monopoly rights recorded on a public register. If the Patents Court is likely to resolve validity significantly sooner than the EPO, it will normally be proper to refuse a stay.

6. A commercial party’s properly supported assertion that it needs an early decision should receive substantial weight. Some earlier certainty in the United Kingdom is generally preferable to continuing uncertainty everywhere, even though only the EPO proceedings can produce central certainty across all designated states.

7. Costs, the order in which proceedings began, delay, prejudice, conduct and other case-specific matters remain relevant, but will generally carry less weight than achieving useful commercial certainty sooner. A reasoned global assessment is normally sufficient; the judge need not address every detailed evidential or legal contention.

1. Court of Appeal (Civil Division): The appeal was dismissed by [2008] EWCA Civ 23. The court held that Lewison J had applied the correct principles and was entitled to refuse a stay.
2. High Court, Chancery Division, Patents Court: Lewison J refused the defendants’ application to stay the revocation proceedings pending final determination of the EPO opposition proceedings: [2007] EWHC 1416 (Pat).