Eli Lilly & Co v Human Genome Sciences

Where related proceedings are pending before the European Patent Office and a national court, the parties should promptly inform both tribunals and seek co-operation to avoid duplicated work. The court may defer or relist an appeal where the other proceedings may determine the dispute and make the national appeal unnecessary, particularly where the delay is acceptable and substantial court time may be saved. Parties conducting important commercial litigation must prepare and progress it with due expedition. Commercial uncertainty caused by avoidable delay is contrary to the public interest.

An opposition to a European patent was pending before the European Patent Office while proceedings to revoke the UK patent proceeded in the Patents Court. The Opposition Division indicated that the patent would be revoked and later issued its written decision. Kitchin J also revoked the patent. An appeal from that decision had been listed in the Court of Appeal for late July 2009, while an appeal within the EPO was being prepared.

The Court of Appeal considered whether to retain the July listing or move the appeal to December, having regard to the possible EPO outcome, the parties’ preparedness, delay, and the efficient allocation of judicial resources.

1. Directions and relisting. The appeal was moved from the end of July to December. The parties were directed to liaise with the listing office and were encouraged to co-operate with the EPO Board of Appeal in fixing an early hearing date.
2. Parallel proceedings. The existence of parallel EPO and national proceedings required practical co-ordination. Since both the Patents Court and the EPO Opposition Division had held the patent invalid, there was a real prospect that an EPO decision would make the national appeal unnecessary. Relisting therefore offered a substantial prospect of saving five days of Court of Appeal time, while the resulting delay was not regarded as materially significant to the opponents. The court also took account of the parties’ ability to progress the EPO appeal and the absence of any acceptable reason for further delay.
3. Conduct of litigation. Parties litigating important commercial matters before the EPO and national courts should inform both tribunals of the parallel proceedings as early as possible and, where possible, ask the appropriate tribunal to expedite its process. Serious litigation must be conducted with due expedition because avoidable commercial uncertainty is unfair, unjust and contrary to the public interest.

• Court of Appeal (Civil Division): In [2009] EWCA Civ 168, the Court gave directions and moved the appeal listing from the end of July to December.
• Chancery Division, Patents Court: Kitchin J had revoked the patent. No citation for that decision is stated in the judgment.