Teva UK Ltd & Anor v ICOS Corporation & Anor

A product and process description in patent proceedings must contain sufficient information to resolve infringement issues on both sides’ reasonably arguable constructions of the claim. Where a party cannot verify relevant information, it must say so promptly so that disclosure or sample-testing can be considered. The court’s overriding objective may require samples to be provided and a trial to be adjourned where testing is the only fair way to resolve a material factual issue. Case management should preserve a fair and proportionate route to determination while allowing commercially significant patent disputes to be resolved in good time.

This was a pre-trial review concerning infringement of EP (UK) 1,200,090, relating to a tadalafil formulation. The patent’s validity was not in issue. Lilly sought samples of Teva’s product because Teva’s product and process description addressed infringement on Teva’s construction of the claim but did not provide information relevant to Lilly’s alternative construction.

The court considered whether samples should be ordered and whether the construction issue should nevertheless be tried immediately, shortly before the listed trial. The central issues were the scope of the product and process description obligation, the parties’ conduct in clarifying the competing constructions, and the fair timetable for resolving the infringement dispute.

1. The application for samples was granted. The court directed that samples be provided and that the infringement issues concerning the patent be adjourned.

2. A product and process description is not limited to the issues arising on the serving party’s own construction of the patent claim. It must contain enough information to resolve infringement on both sides’ constructions where those constructions are properly arguable. The court adopted the principle stated in Starsight v Virgin Media [2014] EWHC 828 (Pat) and noted its earlier expression of the same point in Vringo v ZTE [2015] EWHC 818 (Pat). A similar principle appeared in RIM v Visto [2008] EWHC 335.

3. The product and process description exercise is, in substance, a disclosure exercise, although it is provided instead of documentary disclosure. If a party later discovers that relevant information cannot be described or verified, it must promptly inform the opponent. An order for disclosure or samples may then be appropriate, depending on the circumstances.

4. Both constructions were properly arguable. Teva’s description did not answer the issue raised by Lilly’s construction, and Teva did not know the relevant information. Once that became clear, sample-testing was the only fair means of resolving the factual question.

5. Applying the overriding objective in CPR r 1.1, the court held that an immediate construction hearing risked unnecessary cost and duplication because testing might eliminate any infringement case. The trial was therefore directed to take place in the autumn term, between 1 October and Christmas 2016, leaving time for first-instance determination and any appeal before expiry of the compound SPC.