Sandoz AG & Ors v Biogen MA Inc (Permission to Appeal)

Permission to appeal may be refused where the proposed grounds do not disclose a realistic prospect of success. The court may assess the grounds together where their combination is said to provide a route to a different substantive outcome. A judge’s adoption of a construction which has acknowledged difficulties does not establish inconsistency merely because a competing construction attracts a similar criticism, provided there are additional reasons for rejecting the competing construction and the adopted construction remains the best construction in the circumstances.

The claimants applied for permission to appeal from an earlier judgment in patent proceedings against Biogen MA Inc. The underlying judgment considered several possible constructions of the patent claim, identified at paragraph 279, and adopted Construction 5. Biogen preferred Construction 3 and argued that the earlier judgment was internally inconsistent in its treatment of the claim’s 1.5 index value. The application concerned five proposed grounds of appeal, with grounds 1 and 2 relied on as providing a route to a finding of validity.

1. Permission refused. The court considered Biogen’s grounds 1 and 2, both as explained in the written argument and in oral submissions. It concluded that there was no realistic prospect of success on those grounds, individually or in combination, and therefore no route by which Biogen could obtain a finding of validity on appeal.
2. The court rejected the allegation that the earlier judgment was internally inconsistent. Although Construction 3 had been criticised, at least in part, because the 1.5 index value was an arbitrary number, that criticism did not necessarily apply with equal force to Construction 5. There were additional reasons for rejecting Construction 3.
3. Construction 5 had been adopted because it was the best construction in the circumstances of the case. Its adoption did not mean that it was free from difficulty.
4. Had grounds 1 and 2 disclosed a realistic prospect of success in combination, permission would have been granted to pursue grounds 3, 4 and 5. In consequence of the conclusion on grounds 1 and 2, permission to appeal was refused.

The judgment records an application for permission to appeal from the judge’s earlier patent judgment. The citation of that earlier judgment is not stated in the supplied text.

• High Court (Patents Court): permission to appeal refused because grounds 1 and 2 did not have a realistic prospect of success.