Pacific Biosciences of California, Inc v Oxford Nanopore Technologies Ltd & Anor

A request for further information serves case management by identifying the material facts relied upon at trial. It should define the factual basis of the dispute, but should not require the party to plead the evidence or argument by which those facts will be proved.

In a patent claim based on infringement by equivalence, the pleading should identify the facts relied upon in relation to the relevant equivalence questions, including the result achieved, the way it is achieved, and the inventive core relied upon. Expert evidence provides opinion evidence on the pleaded case; it does not advance or define that case.

The defendants applied under CPR 18 for further information about the claimant’s case that a DNA-sequencing process infringed a patent by equivalence. The proceedings were approaching expert evidence, a pre-trial review and trial.

The claimant alleged that bridged nucleic acids in the defendants’ sequencing adapters were equivalent to the patent’s connecting nucleic acid. The defendants sought clarification of the facts relied upon for the three equivalence questions identified in Actavis UK v Eli Lilly, including the result, the way in which it was achieved, and the patent’s inventive core.

The central issue was whether further definition was necessary for the just and efficient disposal of the case and, if so, which requests sought proper particulars rather than evidence or argument.

1. Application granted. The claimant was ordered to answer the defendants’ request for further information in the form approved by the court. The defendants were awarded the costs of and occasioned by the application.
2. A request for further information under CPR 18 forms part of the court’s responsibility to manage cases and secure their just and efficient disposal. Its function is to identify the material facts relied upon at trial, with sufficient particularity to define the dispute and ensure that experts address the same relevant issues. It is not a means of pleading the evidence or argument by which those facts will be established.
3. The court applied the equivalence framework identified in Actavis UK v Eli Lilly [2017] UKSC 48. The claimant was required to identify the alleged result achieved by the patent’s connecting nucleic acid, the way in which that result was achieved, and the way in which the defendants’ sequencing adapter was said to achieve substantially the same result in substantially the same way. The claimant also had to identify the facts relied upon in relation to the relevant limbs of the equivalence questions.
4. The request properly required clarification of which pleaded facts related to the result and which related to the way in which the result was achieved. It was also proper to require identification of the parts of the patent said to demonstrate its inventive core, since that issue bore upon whether substantially the same result was achieved in substantially the same way.
5. Requests asking the claimant to explain how facts supported its allegations, or to state the argument to be advanced, were impermissible. Such requests sought argument rather than particulars. The simultaneous or near-simultaneous service of expert evidence did not remove the need for properly defined pleadings, because expert evidence and particulars perform different functions.

First-instance decision on an application by the defendants for further information in patent infringement proceedings. No earlier appellate decision was stated in the judgment.