Takeda UK Ltd v F. Hoffmann-La Roche AG

In patent case management, trial dates are fixed by balancing readiness, the parties’ interests, counsel availability, commercial certainty and listing resources. A practice statement expressing an endeavour to list cases within 12 months does not create a legitimate expectation of a trial within that period.

Specific disclosure should be ordered where documents are proportionate and may materially assist pleaded issues. It should be refused where the request is speculative, duplicative or unnecessary. The court may order identification of group companies potentially receiving infringement profits without deciding their liability or involvement in a common design.

This was a case management conference in a patent revocation action concerning antibody glycosylation. The applications concerned the trial date, specific disclosure, service of notices of experiments, and identification of Takeda group companies receiving profits from UK Entyvio sales.

The court considered whether the trial should be listed in June or October 2019, whether disclosure should extend to additional antibody sub-clones and Simulect-related documents, when experimental notices should be served, and whether Takeda should identify entities receiving profits from allegedly infringing sales.

1. Trial date. The Patents Court’s endeavour to bring cases to trial within 12 months, stated in the Practice Statement issued on 7 December 2015, did not create a legitimate expectation of a trial within that period. The court considered commercial certainty, possible influence on the German proceedings, counsel availability, the parties’ conduct and court resources. The case was ordered to be fixed after 1 June 2019.
2. Specific disclosure. Disclosure concerning sub-clones 1–8 was agreed. It was also ordered for sub-clones 9–14 because their classification as outside the claims could assist on claim scope and non-infringement. The additional disclosure was proportionate and not shown to be onerous.
3. Further disclosure concerning Simulect was refused. Roche had confirmed that relevant documents in its control had already been disclosed in the EPO proceedings and were available on the public file. A further order would be speculative, duplicative and unnecessarily costly.
4. The notice of experiments was to be served on 4 December 2018, since the disclosure due on 19 September 2018 might affect the experimental design.
5. The court had jurisdiction, existing even before the Norwich Pharmacal decision, to order a potential wrongdoer to disclose the names of other potential wrongdoers. The identification order did not determine whether those companies were involved in a common design or otherwise liable.