Eli Lilly And Co & Ors v Genetech Inc

Experimental evidence obtained for other proceedings cannot be introduced without complying with the court’s directions and the established procedure for experimental proof. The procedure is mandatory, although the court retains a discretion to admit non-compliant experiments in special circumstances. In exercising that discretion, the court must consider fairness and the opposing party’s opportunity to understand the evidence, witness its repetition, conduct experiments in reply and obtain responsive expert evidence. Cost-saving and the fact that the original experiments cannot be precisely repeated do not necessarily justify late admission. A party is not entitled to present the court and its opponent with a fait accompli shortly before trial.

The claimants sought permission at a pre-trial review to rely on experiments conducted by Novartis for European Patent Office opposition proceedings. The experiments concerned antibodies made in 2002 or 2003 and could not be repeated by the claimants for inspection by the defendant.

The claimants had not applied for permission within the timetable ordered by the court. They instead referred to the experiments in an expert report served shortly before trial. The defendant objected, relying on the resulting lack of notice and opportunity to conduct experiments in reply. The central issue was whether permission should nevertheless be granted.

1. Permission refused. The claimants were refused permission to rely on the Novartis experiments.
2. The court treated the procedure governing experimental evidence as mandatory. Experiments should be notified and permission obtained in accordance with the court’s directions. Non-compliant experiments may be admitted only where the court’s discretion is justified by special circumstances.
3. The relevant prejudice was not confined to the possibility of repeating the precise experiments. Without timely notice, the defendant had been deprived of the opportunity to understand the facts sought to be proved, consider the evidence, obtain responsive expert evidence and conduct other experiments with different antibodies.
4. The claimants’ explanations did not establish special circumstances. The issues had not developed only after the procedural deadline, the defendant’s objection had been clear for several months, and the experiments were relied on in evidence in chief rather than in reply. Cost-saving might have supported a timely application, but did not justify presenting the defendant and the court with a fait accompli at the pre-trial review.
5. The court considered the non-compliance to be a brazen disregard of the court’s orders and established practice. Permission was therefore refused.