Fresenius Kabi Deutschland GmbH & Ors v Carefusion 303, Inc

An order granting permission to amend pleadings does not necessarily compel the party obtaining permission to proceed with the amendment. Whether service is mandatory or directory depends on the order construed as a whole. A conditional election to consent to revocation must comply with the condition imposed by the order. A notice that consent is motivated by litigation costs, while maintaining that the patent is valid, does not amount to consent to revocation as a result of the newly pleaded matter. Where the required evidence has not been served, an unless order may be appropriate. Permission to appeal does not, without more, justify vacating an imminent trial date.

Fresenius sought revocation of a patent and CareFusion counterclaimed for infringement. Norris J permitted Fresenius to re-amend its grounds of invalidity to plead public prior use of the Terumo Device, but imposed a conditional costs order under which CareFusion could withdraw its defence and counterclaim and consent to revocation as a result of the matter introduced by the re-amended statements of case.

Fresenius did not serve the re-amended statements. CareFusion nevertheless sent two letters purporting to exercise the election. Fresenius applied to debar CareFusion from relying on evidence, while CareFusion contended that the proceedings had ended. The issues were whether the order compelled Fresenius to proceed with the amendments and whether CareFusion had validly exercised its election.

1. The application was not finally determined by treating the proceedings as at an end. The order made by Norris J did not compel Fresenius to serve the re-amended statements of case. The wording requiring service was directory as to timing, rather than mandatory as to whether Fresenius had to proceed. The provision for consequential amendments and the absence of any express election provision did not justify implying an irrevocable commitment.

2. The evidence timetable did not alter that construction. The obligation to exchange evidence relating to the new prior art depended on whether that prior art had been introduced into the proceedings. If amendments were served too late for response evidence, they could be addressed in reply evidence.

3. The words requiring CareFusion to consent to revocation “as a result of” the matter introduced by the re-amended statements had to be given effect. They did not require CareFusion to concede that the patent was invalid. They did require an election to consent to revocation as a result of the newly introduced matter.

4. CareFusion’s two letters did not satisfy that condition. The second letter omitted the required qualification. The first expressly maintained that the patent was valid, including over the Terumo Device, and identified the commercial cost of continuing the proceedings as the reason for consenting. The purported election was therefore invalid.

5. CareFusion was not immediately debarred from adducing evidence. It was given until 4 p.m. on 14 October 2011 to serve written evidence, failing which it would be debarred under an unless order. Permission to appeal was granted, but the existing trial date was not vacated, without prejudice to a later application on proper notice and evidence. An interim costs payment of £16,000 was ordered.

Not an appeal. The judgment records an earlier interlocutory order by Norris J dated 26 September 2011, reported as [2011] EWHC 2052 (Pat), which permitted part of Fresenius’s proposed re-amendment and made the conditional costs and election order considered in this judgment.