Regen Lab SA v Estar Medical Ltd & Ors

An appellate court may refuse a stay pending parallel validity or other proceedings where it would prolong unacceptable commercial uncertainty, the application was delayed, the applicant’s conduct is inconsistent with the course it previously chose, and any costs saving is outweighed by prejudice and procedural efficiency. Allegations based on material withheld from the other party cannot justify procedural relief, particularly where no ground of appeal or application to adduce fresh evidence has been made. A party in default of an order to lodge appeal bundles should provide a satisfactory explanation and a precise proposal for curing the default. Repeated breaches, deliberate failure to progress the appeal, an imminent hearing, and prejudice to the respondent and court may justify striking out the appeal. A valuable right, permission to appeal, self-representation, or a genuine wish for delay does not by itself warrant indulgence.

Regen brought patent infringement proceedings concerning the UK designation of a European patent. Estar counterclaimed for revocation. On 18 January 2019 HHJ Hacon dismissed the action and revoked the UK designation. The European Patent Office’s Opposition Division later declared the patent invalid as a whole, and Regen appealed that decision to the Technical Board of Appeal.

Before the Court of Appeal, Regen sought a stay or adjournment pending the EPO proceedings and Swiss criminal proceedings. Estar sought strike-out and security for costs. The court also considered, on its own motion, whether Regen’s appeal should be dismissed for failure to lodge the appeal bundles.

1. Stay. Floyd LJ refused a stay pending the EPO appeal or the Swiss proceedings. A stay would prolong unacceptable commercial uncertainty for Estar and other operators. Regen had delayed making the application until shortly before the hearing, had chosen to pursue the UK litigation before the EPO proceedings were resolved, and had pursued expensive litigation in several jurisdictions. The limited costs saving therefore carried little weight against the prejudice and inefficiency identified.
2. Natural justice and new allegations. Regen’s allegations concerning misconduct by its employee did not justify a stay or postponement. They were not raised by any ground of appeal, no application had been made to adduce fresh evidence, and the supporting material had been withheld from Estar except on an attorneys’ eyes only basis. In accordance with common-law natural justice, the court could not act on material which one party had been unable to learn about or answer: Al Rawi and others v The Security Service and others [2011] UKSC 34.
3. Adjournment and procedural default. The difficulties Regen faced in preparing the appeal were self-created. On an own-motion application for failure to lodge appeal bundles, the defaulting party should provide both a satisfactory explanation and a precise, concrete proposal for rectifying the breach. Regen had a history of procedural breaches, provided no good explanation, and offered no realistic proposal or indication that it intended to obtain representation or prepare the bundles. The court was entitled to infer a deliberate strategy to derail the appeal.
4. Final indulgence and disposition. The valuable patent right, permission to appeal, Regen’s unrepresented status, and its genuine preference for delay did not outweigh the prejudice to Estar, the court and other litigants. Permission to appeal involved only a low threshold, while the property right gave Regen reason to pursue the appeal diligently. The notice of appeal was struck out for failure to lodge the bundles, and the appeal was dismissed with costs. The other applications did not require determination, and Regen was ordered to pay £10,000 for the applications.

1. Court of Appeal (Civil Division): In [2020] EWCA Civ 451, refused the stay and adjournment applications, struck out the notice of appeal for failure to lodge the appeal bundles, and dismissed the appeal with costs.
2. High Court of Justice, Business and Property Courts of England and Wales: On 18 January 2019, HHJ Hacon dismissed Regen’s patent infringement claim and revoked the UK designation of the patent.