Illumina Cambridge Ltd v Latvia MGI Tech SIA & Ors

Under Civil Procedure Rules 1998, r 19.2, a party should be joined where there is a properly arguable claim against it and it is desirable for related proceedings to be dealt with together. The court may join a company within the same corporate group as existing defendants where the claims concern the same patents and technology. Interim undertakings affecting other parties do not necessarily mean that the proposed defendant cannot infringe. A customer is not entitled to special protection from joinder merely because it is a customer. Joinder may be delayed briefly to allow the proposed party to negotiate an alternative arrangement with the claimant.

Illumina brought patent infringement proceedings concerning DNA sequencing machines and reagents against four companies associated with the MGI and BGI groups. It applied under Civil Procedure Rules 1998, r 19.2(a) or (b), to join BGI Genomics UK Co Ltd as a fifth defendant. The proposed defendant intended to operate a UK laboratory using the relevant technology, but was not formally represented at the hearing, although solicitors had recently indicated that they represented its interests.

An earlier interlocutory injunction hearing before Mann J had resulted in interim injunctions or undertakings pending an expedited trial. The issues were whether there was a properly arguable infringement claim against the proposed defendant, whether joinder was desirable, and whether the application should be deferred because the proposed defendant lacked formally instructed legal representatives.

1. Application granted. The proposed fifth defendant was ordered to be joined, with the order postponed for 14 days to permit negotiations with the claimant. The postponement did not create a general liberty to apply to set aside the order.
2. The court should not defer the application. The proposed defendant had known of the issue for sufficient time to instruct lawyers and make submissions. Resolving the application immediately caused no prejudice of real significance (paras 9–10).
3. There was a properly arguable case that the proposed defendant could be liable for patent infringement. The evidence showed an intention to operate the relevant sequencing technology in the UK. This was only an arguable case and did not determine infringement or patent validity (paras 12–13).
4. It was desirable to bring the claims together under r 19.2. The claims concerned the same patents and technology, and companies within the same overall group. Interim injunctions or undertakings affecting the existing defendants did not establish that the proposed defendant could not infringe, since it might obtain the relevant products elsewhere (paras 14–17).
5. The fact that the proposed defendant was described as a customer did not justify special treatment. The general undesirability of embroiling customers in litigation did not outweigh the case for joinder, particularly given its relationship with the existing defendants (para 18).
6. Joining the proposed defendant also ensured that the result of the proceedings would bind it, which was important because it maintained that it was separate and distinct from the existing defendants (para 17).

The judgment records an earlier interlocutory injunction hearing before Mann J, resulting in interim injunctions or undertakings pending trial. No appellate history is stated.