Illumina, Inc. & Anor v Premaitha Health Plc & Anor

A later claim is not necessarily an abuse merely because it could have been brought earlier. The court must make a broad, merits-based assessment of whether the claimant is misusing the court process, taking account of public and private interests. The Aldi guidelines apply where a claimant knows of a further cause of action and keeps it in reserve during complex litigation; they do not mechanically bar a claim that the claimant did not appreciate it had. An arguable genuine cause of action should be struck out only in a rare or exceptional case. Issue estoppel may nevertheless prevent an issue essential to an earlier cause of action being reopened in proceedings based on a different cause of action. A first-instance judgment remains final for this purpose while under appeal.

The claimants brought patent infringement proceedings concerning EP (UK) 1 524 321 B2, relating to non-invasive prenatal diagnostic tests. The defendants applied to strike out the claims as an abuse of process, contending that the claims should have been raised in earlier patent proceedings concerning the IONA and Harmony tests. They also sought summary judgment against Illumina on the basis that its status as exclusive licensee had already been determined.

The central issues were whether the later patent claims were abusive, having regard to the Aldi guidelines and alleged prejudice, and whether issue estoppel prevented Illumina from reopening the exclusive-licence issue.

1. Abuse of process. The applications to strike out the EP '321 claims were dismissed. The applicable question was whether, applying a broad merits-based approach, commencing or continuing the later claims was an abuse in all the circumstances. The fact that claims could have been raised earlier did not make their later pursuit automatically abusive.
2. The Aldi guidelines require a party who knows of a further cause of action during complex, multi-party litigation to refer the matter to the court so that case management and efficient use of resources can be considered. They do not apply mechanically where the party has not appreciated that it has a cause of action, even if it ought to have done so. Here, the claimants had not appreciated the relevance of EP '321 to the IONA or Harmony tests at the relevant case-management stages. The claims were arguable and genuine. Denying a trial would therefore be a serious interference with the claimants’ Article 6 rights.
3. Common issues, duplication, additional expense, commercial uncertainty and general litigation prejudice did not establish abuse. The court had made no findings in the earlier proceedings that the later claim collaterally attacked, and sequential patent trials were foreseeable. The defendants’ own delay and the available possibility of expedition also weakened their prejudice arguments.
4. Issue estoppel. Summary judgment was granted against Illumina, but not Sequenom, on the exclusive-licensee issue. Whether the Pooled Patents Agreement, particularly clause 2.3(a), created an exclusive licence was an essential issue in Illumina’s earlier infringement claims. The same issue arose in the EP '321 claim, although the cause of action differed. A first-instance judgment remains final for issue-estoppel purposes while under appeal. A later exclusive licence did not answer the estoppel based on the earlier licence, although Illumina remained free to apply to join as claimant on the basis of the new licence.

First-instance decision. The judgment records that earlier first-instance findings on the exclusive-licence issue were under appeal and that any appeal from this decision could be heard with the related appeals.