“The Defendants [i.e., Mylan] threaten and intend to infringe the Patent by threatening and intending to do the following acts in the United Kingdom without the consent of the Claimants, namely: keep, use, dispose of and/or offer to dispose of a prolonged release melatonin product obtained directly by means of a process as claimed in at least claim 1 and being a product within the scope of claim 4 of the Patent.”
“2. There was no urgency for the form of order hearing to occur prior to the end of term. Neurim’s appeal against the decision of the EPO Opposition Division revoking the Patent as invalid by anticipation by Haimov is fixed to be heard by the Technical Board of Appeal (“TBA”) in oral proceedings on either 17 or18 December 2020 . On27 November 2020 , the TBA issued a provisional opinion which suggests that at the oral hearing the TBA will consider all grounds of invalidity, not just novelty as was considered by the Opposition Division... 3. Unless Neurim are successful with their appeal, the Patent will be revoked ab initio for all European countries, including the UK. If found invalid, it would be as if the Patent (including all designations) had never been granted. In accordance with the usual practice it is expected that the TBA’s decision will be announced at the oral proceedings on 17 or18 December 2020 with written reasons to follow... 4. Should it transpire that the Patent is found invalid by the TBA, then the Claimants will not be entitled to any substantive relief by way of injunctions or any financial remedies. Mylan will also contend that it should be entitled to its costs of these UK proceedings. However, if following this hearing this Court were to have ordered any such relief, the parties would be required to return to Court to rectify the situation. The procedural way forward is not necessarily straightforward and may depend on whether this Court has become functus officio. These procedural difficulties could have been avoided had Neurim taken a sensible approach and agreed for the final order hearing to be listed early in Hilary Term in 2021.”
“...What I am going to invite the parties to do is take away the draft [order that was before me] in light of the ruling that I am going to be giving at the end of the submissions and work it up, I hope with helpful indications from me as to the direction in which it should go, and I will look at it with a view to having it made before 9 o’clock on Friday. So we are not drafting here, but indicating the direction of the draft of the order, so that is where I am coming from.” (3) In the event, the parties were unable to agree the terms of an order. Over the course of the next fortnight, I was presented with various draft orders from both sides. No order setting out the precise wording of the16 December 2020 Orders was ever agreed by the parties. In these circumstances, it is difficult to set out in writing precisely the wording of the orders that I made, given that no order was formally drawn (not because of any “slip”, but because the parties were at odds on the substantive wording). (4) Nevertheless, it is important that I set out – at least in relatively broad-brush terms Clearly, some of the detail does not matter, and where that is the case, I have omitted it. My statement of what was ordered is derived from the (contentious) draft orders that were submitted to me, both at the hearing and subsequently, and the transcript of what was said on16 December 2020 . – what was ordered, so that it is clear from the face of this Consequential Judgment what orders were made. The16 December 2020 Orders comprised and/or made provision for: (a) A declaration of validity of the Patent and a declaration of infringement of the Patent by Mylan. (b) A declaration that Flynn was not an exclusive licensee under the Patent. (c) A certification that the validity of the claims of the Patent had been unsuccessfully contested by Mylan pursuant tosection 65 of the Patents Act 1977 . (d) A dismissal of Mylan’s counterclaim for invalidity. (e) Permission to amend the Patent. (f) An injunction enjoining Mylan from infringing the Patent. That injunction was to commence effect from 9:00pm on Friday18 December 2020 , but was subject to a “sunset” provision in the event of Neurim’s appeal before the Technical Board of Appeal being unsuccessful. (The prospect of Neurim withdrawing the appeal was not canvassed before me. Had it been, I obviously would have included it as one of the events that would cause the injunction to lapse.) Pending the coming into force of the injunction, Mylan offered, and I accepted, various undertakings as to how the Infringing Products might be dealt with. (g) The delivery up of and/or destruction of Infringing Products. (h) An inquiry as to damages or an account of profits. (i) Costs. Essentially, the Claimants were awarded their costs, subject to a deduction reflecting the Claimants’ failure in respect of the Exclusive Licence Point. (j) Permission to appeal. Essentially, I gave permission to the Claimants to appeal the Exclusive Licence Points, and I refused Mylan permission to appeal my declarations of validity of the Patent. (k) The protection of confidential material underCPR 31.22 . (5) Even after the outcome of the appeal in the EPO Proceedings was known – and the Patent therefore revoked ab initio – Neurim sought to persuade me to make an order effectively embodying that which had been ordered on16 December 2020 . It seemed to me that this was an inappropriate course, for two reasons: (a) First, it was something of an exercise in futility. The precise terms of the16 December 2020 Order were, as I have described, simply not agreed between the parties. It would have been difficult for me – particularly knowing the outcome of the appeal before the Technical Board of Appeal – even to attempt to draw up precisely the order that I would have made before knowing the outcome of the appeal, given the absence of agreement between the parties. (b) Secondly, and much more seriously, although not drawn, the16 December 2020 Orders had been made. There was, given the inevitable lack of clarity arising from the fact that the precise wording of these orders was not agreed, a very real risk that Mylan might inadvertently end up in breach of something that had been ordered on16 December 2020 in circumstances where (i) there was a lack of clarity in the orders, but (ii) there was a case to be made that at least some of those orders ought not to stand. This was most evident in the draft orders that Neurim submitted to me. Neurim clearly recognised – for example – that a declaration of validity (as had been made) could not be maintained, and neither could the injunction that had been granted continue. On the other hand, Neurim did seek to hang onto the costs orders that had been made and the permission to appeal that had been given. Thus, Neurim seemed to be advancing a rather selective approach as to which elements of the16 December 2020 Orders should continue to stand, with which selection, of course, Mylan disagreed. It seemed to me then, and seems to me now, that this was a situation that ought to be avoided. In particular, given that it was common ground between the parties that the injunction could no longer stand, in light of the outcome of the Technical Board of Appeal, it was important that it be unequivocally discharged. Of course, that was the point of the “sunset” provisions. But these had not been finally drawn. (6) Accordingly, the order that I did make on30 December 2020 (the30 December 2020 Order)sought to “hold the ring” pending a, second, consequentials hearing. It is appropriate to set out the terms of the30 December 2020 Order more or less in full: “UPON the trial of this claim and counterclaim being heard before the Honourable Mr Justice Marcus Smith on 29, 30 October and 2 and5 November 2020 AND UPON hearing Mr Andrew Waugh, QC and Ms Katherine Moggridge for the Claimants and Mr Mark Vanhegan, QC and Mr Mitchell Beebe for the Defendants AND UPON the Applications of the First and Second Claimants to amend [the Patent] (the patent so amended being hereafter referred to as the “Patent”) AND UPON Judgment being handed down on4 December 2020 (the “Judgment”) AND UPON the Court making an oral order at the form of order hearing heard on Wednesday16 December 2020 that in this Claim inter alia: (i) the Patent was held valid and infringed, (ii) the Second Claimant is not and has never been an exclusive licensee of the Patent, (iii) the validity of the claims of the Patent were unsuccessfully contested at the trial, (iv) the Defendants counterclaim for invalidity of the Patent is dismissed, (v) the First Claimant has permission to amend the Patent, (vi) an injunction is granted against the Defendants commencing at 9:00pm on Friday,18 December 2020 , (vii) the Defendants shall deliver-up and/or destroy any infringing products, (viii) there be an inquiry as to damages or at the First Claimant’s election an account of profits, (ix) the Claimants have permission to appeal the Court’s decision that the Second Claimant was not an exclusive licensee under the Patent and (x) the Defendants are refused permission to appeal on the issue of validity and (xi) further consequential orders relating to costs and confidentiality (together, the “16 December 2020 Orders”) AND UPON the Defendants undertaking at the hearing on Wednesday,16 December 2020 to use best endeavours not to enter into any further sales of Melatonin Mylan 2mg prolonged release tablets (“Infringing Product”) and in any event not to enter into any new sales of their Infringing Product from 9am (GMT) on Thursday17 December 2020 (the “Defendants’ Undertakings”) AND UPON the First Claimant at about 12 noon on Friday,18 December 2020 withdrawing its appeal before the Technical Board of Appeal of the European Patent Office, against the Opposition Division of the European Patent Office’s judgment that European Patent No 1441702 is invalid, ab initio, thereby terminating the suspensive effect of the First Claimant’s appeal against the invalidity of the Patent AND UPON the Patent being held invalid ab initio by the European Patent Office, Opposition Division and thereby revoked upon the First Claimant’s withdrawal of its appeal AND UPON the Claimants consenting to the Defendants being released forthwith from the Defendants’ Undertakings and this Court confirming the said release by email from the Honourable Mr Justice Marcus Smith on Friday,18 December 2020 AND UPON the Claimants accepting in light of the First Claimant’s withdrawal of its appeal before the Technical Board of Appeal, and accepting that the Patent has been revoked ab initio, that the Claimants are not entitled to any substantive relief against the Defendants in respect of the Patent, whether by way of injunctions or by way of inquiry as to damages or account of profits or otherwise howsoever AND UPON the Defendants’ application underCPR 3.1 (7) that the Claimants are liable for the costs of this Claim as a result of a material change of circumstances namely the First Claimant’s withdrawal on Friday,18 December 2020 of its appeal against the decision of the European Patent Office Opposition Division revoking the Patent, and the Claimants’ acceptance that the Patent should be and has been revoked ab initio (the “Application”) AND UPON considering the matter on the papers IT IS ORDERED THAT: 1. Save as set out in paragraphs 3 to 4 below, the16 December 2020 Orders are hereby revoked, but without prejudice to any contention that (after a further hearing) the same or similar orders may be made. 2. The hearing of the Application is to be fixed for the first convenient date for the Court and the parties in Hilary Term 2021 and the parties are to liaise with the Court to arrange fixing of the same...”
“(1) The16 December 2020 Orders were made at a hearing arranged as a matter of urgency at the request of the Claimants in order to ensure prompt injunctive relief in light of the Judgment. I considered it right to hear the matter urgently because of the importance to the Claimants of obtaining swift injunctive relief but – of my own motion – also stated that all consequential matters should (so far as possible) be determined also. (2) That direction was given notwithstanding the imminent hearing before the appeal before the Technical Board of Appeal. Self-evidently, the outcome of that hearing was not known on16 December 2020 . (3) Given the possibility that the Technical Board of Appeal would declare the Patent invalid, the16 December 2020 Orders contained “sunset” provisions in respect of the injunction granted. However, the effect of the outcome of that appeal on other aspects of the16 December 2020 Orders was not specifically considered, albeit that I gave a provisional indication that I considered the costs orders consequential on the Judgment to be independent of the appeal before the Technical Board of Appeal. (4) The outcome of the appeal before the Technical Board of Appeal is now known. In my judgment, this constitutes a sufficient change in circumstance to warrant further submissions on the question of costs and (perhaps) other aspects of the16 December 2020 Orders. I am not, of course, acceding to the Defendants’ submissions on the orders that should be made, I am merely declining to formalise the16 December 2020 Orders in light of the subsequent developments that I have described. Had the parties been able to agree the terms of an order formalising the16 December 2020 Orders, then matters might be different. But, in point of fact, no agreed draft was presented before close of business on Thursday17 December 2020 or at all. (5) In these circumstances, it seems to me that the most appropriate course is to formally revoke the16 December 2020 Orders and not to embody them in a final, sealed, order; and instead to re-visit the subject matter of the16 December 2020 hearing at a further hearing. I am grateful to the Defendants for issuing the Application, but (given the somewhat unusual circumstances) such an Application may be strictly not be needed.”
“Rather, the question I should ask myself is whether the change in circumstance is such that it seems to me either that Slade J would have reached a different conclusion or that it is such that in my judgment the injunction must be varied.” 15. I will approach this application by asking if the change relied on makes a sufficient difference to justify changing the order made. In other words would it, taking all the circumstances into account, justify rescheduling Trial F to be heard with Trial E.” “Rather, the question I should ask myself is whether the change in circumstance is such that it seems to me either that Slade J would have reached a different conclusion or that it is such that in my judgment the injunction must be varied.”
“(no-one before me disputed this)”
“20. The relevant background is the European Patent Convention (“the EPC”), an international treaty, and thePatents Act 1977 (“the 1977 Act”). The EPC contains provisions which enable any person to apply for revocation of a granted patent. Thus under art.138 of the EPC a European Patent may be revoked by a national court of a Contracting State (e.g. in proceedings by way of direct action for revocation or counterclaim to an infringement action). Revocation in such circumstances will apply only to the designation of the Patent in that Contracting State. 21. A party who contends that a granted European Patent is invalid, and should be revoked, can also do so by means of the opposition procedure in the EPO. An opposition in the EPO must be launched within 9 months of grant, but there is no provision for when such proceedings must end. Experience has shown that opposition proceedings before the EPO are likely to take many years. There are numerous reasons for this. One reason is the EPO’s serial approach to decision making. Where an opponent raises a variety of grounds of opposition, the practice of the EPO is to decide the issues in a given order. If, on consideration, a ground succeeds, it is rare for the OD to go on and decide the other issues in the sequence, as a first instance court in this country might consider itself obliged to do. As a result, if the OD’s decision is overturned on appeal, the TBA will normally have to remit the case to the OD for it to consider the next issue. And so on. Some of that has happened in this case. 22. The EPO has been a victim of its own success. In the normal run of things an appeal from the OD to the TBA may take four years. Mr Carr showed us T 0612/09, CUBIST PHARMACEUTICALS, INC/Daptomycin (unreported), a decision of the TBA on an appeal against a decision of the OD dated19 January 2009 revoking a patent, some two years after the opposition proceedings had been commenced. The Board’s decision remitting the case to the OD is dated11 April 2013 , more than four years later, and six years from the commencement of the proceedings. The OD’s attempt to decide more issues than necessary were dismissed as obiter dicta by the TBA. The Board’s discussion of whether it should remit the case in these circumstances is revealing: “25. As already mentioned, the present appeal was filed in January 2009. The oral proceedings were held on10 April 2013 and the decision issued on11 April 2013 . The appeal proceedings thus lasted a little over four years. While it gives the board no pleasure to say so, four years is currently the average time taken to dispose of the appeals in its list of pending cases. 26. Against that background the board, in considering the respondents’ argument that better justice would be done by the board itself reconvening at a later point in time, has to ask when that point in time would, or should, be? Quite clearly it could not, at the very earliest, be before any of the board’s currently scheduled oral proceedings in other cases, and thus not in 2013. If, on the one hand, it should be before oral proceedings have taken place in all, or some, of the other cases in the board’s list of pending cases, then clearly there would be a possible argument that the board was giving unfair preference to this case, in which oral proceedings on the issue giving rise to the appeal have already taken place and that issue has been decided, over other cases which have also been pending for four years and in which oral proceedings have not yet taken place. If, on the other hand, the board were now to treat this case as a newly-filed appeal for the purpose of the undecided issues, the parties might, indeed in the currently prevailing conditions probably would, have to wait another four years for a final decision. In the board’s opinion, neither of those solutions would lead to better justice, and certainly not necessarily to an earlier final decision, as the respondents argued. 27. The board understands that currently the time taken to dispose of opposition proceedings is (as happened in the present case) about two years so assuming that, after a remittal, the opposition division gives this case no particular preference, the parties would have a decision in half the time they might have to wait for a decision from the board. Of course, if one or more parties were then to appeal, a further long wait for a final decision might then ensue - just how long would depend on the length of the board’s list of pending cases at that future point in time. But, in the absence of a further appeal, the likelihood must be that the parties will achieve a final decision sooner if there is a remittal and that is significant. Thus the board considers, not without regret, that the question of delay and the possible injustice delay may cause points, on balance, in favour of remittal.” 23. A procedure which allows disputes over patent rights to take in excess of a decade cannot meet the needs of industry, particularly in rapidly moving areas of technology. Although such a procedure may technically comply withart.6 of the European Convention on Human Rights , which guarantees a trial before an independent tribunal within a reasonable time, the opportunity for successive appeals and remittals means that there is in practice no final determination of the parties’ rights for many years. Given their procedures, the Boards have a difficult task in seeking to achieve justice and finality. 24 Although the ODs and TBAs have shown sensitivity to acceleration of their proceedings in cases of commercial urgency, the serial nature of their procedures is not well adapted to arriving at early decisions even in cases where expedition is granted. The present case is an illustration of that fact. Even with expedition, the OD and TBA in this case have resolved only one of the issues in the oppositions since the opposition period closed on17 December 2010 . When the OD sits again on the currently predicted date of22 Jan 2014 to consider lack of novelty and inventive step, the proceedings will have passed their third anniversary. An expedited appeal might take another year. By contrast, all the issues of infringement and validity in the Nokia action were considered by two instances in this jurisdiction in just over two years from service of the claim form. 25. Whilst the delays which occur in the opposition procedure of the EPO cannot be described as part of the architecture of the system, they form an important part of the background to any application for a stay of national proceedings pending the outcome of proceedings in the EPO. 26. It is inherent in the scheme provided by the EPC and the Act that the twin routes to revocation of a patent may be pursued at the same time. This is visible in a number of places in the Act. Thus s.77(3) provides that: “(3) Where in the case of a European patent (UK) – (a) proceedings for infringement . . . have been commenced before the court or the comptroller and have not been finally disposed of, and (b) it is established in proceedings before the European Patent Office that the patent is only partially valid, the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.” 27. That section recognises that a decision of the EPO may be made at a time when infringement proceedings are before the national court, and provides that the effect of any amendment to the patent made by the EPO is the same as if the amendment had been ordered by the court. 28. It is important to keep in mind the range of possible consequences of the two sets of proceedings, and their impact on one another. It is these features of the system created by the EPC which make the considerations affecting the grant of stays in patent cases different from those in other types of case: see in this connection the observations of Lewison J in Glaxo Group Ltd v. Genentech Inc[2007] EWHC 1416 (Pat) at [37] to [38]. Thus, in the EPO the patent can be revoked, maintained in an amended form or maintained as granted. Whilst revocation operates in rem, a finding that the patent is valid as granted in opposition proceedings does not operate as an issue estoppel between the parties thereto: see Buehler AG v. Chronos Richardson Ltd,[1998] RPC 609 ,[1998] 2 All ER 960 . Moreover, the EPO has no jurisdiction over the issue of infringement, which is within the exclusive jurisdiction of the national court. The jurisdiction of the national court is, however, territorial both in relation to infringement and in relation to validity. A decision by the national court to revoke a patent with effect for its own jurisdiction cannot be affected by a later decision of the EPO. The same is true of a finding of non-infringement.” (3) Thus, the Court of Appeal recognised that twin routes to revocation might be in play, in any given case, and that these different routes might impact on one another. That, as Floyd LJ rightly said, was a matter that made “the considerations affecting the grant of stays in patent cases different from those in other types of case”. 38 At [28]. At [68] of his judgment, Floyd LJ provided guidance as to how the question of staying proceedings ought to be approached in this particular context: “1. The discretion, which is very wide indeed, should be exercised to achieve the balance of justice between the parties having regard to all the relevant circumstances of the particular case. result, if the OD’s decision is overturned on appeal, the TBA will normally have to remit the case to the OD for it to consider the next issue. And so on. Some of that has happened in this case. “25. As already mentioned, the present appeal was filed in January 2009. The oral proceedings were held on10 April 2013 and the decision issued on11 April 2013 . The appeal proceedings thus lasted a little over four years. While it gives the board no pleasure to say so, four years is currently the average time taken to dispose of the appeals in its list of pending cases. 26. Against that background the board, in considering the respondents’ argument that better justice would be done by the board itself reconvening at a later point in time, has to ask when that point in time would, or should, be? Quite clearly it could not, at the very earliest, be before any of the board’s currently scheduled oral proceedings in other cases, and thus not in 2013. If, on the one hand, it should be before oral proceedings have taken place in all, or some, of the other cases in the board’s list of pending cases, then clearly there would be a possible argument that the board was giving unfair preference to this case, in which oral proceedings on the issue giving rise to the appeal have already taken place and that issue has been decided, over other cases which have also been pending for four years and in which oral proceedings have not yet taken place. If, on the other hand, the board were now to treat this case as a newly-filed appeal for the purpose of the undecided issues, the parties might, indeed in the currently prevailing conditions probably would, have to wait another four years for a final decision. In the board’s opinion, neither of those solutions would lead to better justice, and certainly not necessarily to an earlier final decision, as the respondents argued. 27. The board understands that currently the time taken to dispose of opposition proceedings is (as happened in the present case) about two years so assuming that, after a remittal, the opposition division gives this case no particular preference, the parties would have a decision in half the time they might have to wait for a decision from the board. Of course, if one or more parties were then to appeal, a further long wait for a final decision might then ensue - just how long would depend on the length of the board’s list of pending cases at that future point in time. But, in the absence of a further appeal, the likelihood must be that the parties will achieve a final decision sooner if there is a remittal and that is significant. Thus the board considers, not without regret, that the question of delay and the possible injustice delay may cause points, on balance, in favour of remittal.” “(3) Where in the case of a European patent (UK) – (a) proceedings for infringement . . . have been commenced before the court or the comptroller and have not been finally disposed of, and (b) it is established in proceedings before the European Patent Office that the patent is only partially valid, the provisions of section 63 or, as the case may be, of subsections (7) to (9) of section 58 apply as they apply to proceedings in which the validity of a patent is put in issue and in which it is found that the patent is only partially valid.” operate as an issue estoppel between the parties thereto: see Buehler AG v. Chronos Richardson Ltd,[1998] RPC 609 ,[1998] 2 All ER 960 . Moreover, the EPO has no jurisdiction over the issue of infringement, which is within the exclusive jurisdiction of the national court. The jurisdiction of the national court is, however, territorial both in relation to infringement and in relation to validity. A decision by the national court to revoke a patent with effect for its own jurisdiction cannot be affected by a later decision of the EPO. The same is true of a finding of non-infringement.” (3) Thus, the Court of Appeal recognised that twin routes to revocation might be in play, in any given case, and that these different routes might impact on one another. That, as Floyd LJ rightly said, was a matter that made “the considerations affecting the grant of stays in patent cases different from those in other types of case”. 38 At [28]. At [68] of his judgment, Floyd LJ provided guidance as to how the question of staying proceedings ought to be approached in this particular context: 2. The discretion is of the Patents Court, not of the Court of Appeal. The Court of Appeal would not be justified in interfering with a first instance decision that accords with legal principle and has been reached by taking into account all the relevant, and only the relevant, circumstances. 3. Although neither the EPC nor the 1977 Act contains express provisions relating to automatic or discretionary stay of proceedings in national courts, they provide the context and condition the exercise of the discretion. 4. It should thus be remembered that the possibility of concurrent proceedings contesting the validity of a patent granted by the EPO is inherent in the system established by the EPC. It should also be remembered that national courts exercise exclusive jurisdiction on infringement issues. 5. If there are no other factors, a stay of the national proceedings is the default option. There is no purpose in pursuing two sets of proceedings simply because the Convention allows for it. 6. It is for the party resisting the grant of the stay to show why it should not be granted. Ultimately it is a question of where the balance of justice lies. 7. One important factor affecting the exercise of the discretion is the extent to which refusal of a stay will irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court is intended to confer. Thus, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which is not repayable if the patent is subsequently revoked, this would be a weighty factor in favour of the grant of a stay. It may, however, be possible to mitigate the effect of this factor by the offer of suitable undertakings to repay. 8. The Patents Court judge is entitled to refuse a stay of the national proceedings where the evidence is that some commercial certainty would be achieved at a considerably earlier date in the case of the UK proceedings than in the EPO. It is true that it will not be possible to attain certainty everywhere until the EPO proceedings are finally resolved, but some certainty, sooner rather than later, and somewhere, such as in the UK, rather than nowhere, is, in general, preferable to continuing uncertainty everywhere. 9. It is permissible to take account of the fact that resolution of the national proceedings, whilst not finally resolving everything, may, by deciding some important issues, promote settlement. 10. An important factor affecting the discretion will be the length of time that it will take for the respective proceedings in the national court and in the EPO to reach a conclusion. This is not an independent factor, but needs to be considered in conjunction with the prejudice which any party will suffer from the delay, and lack of certainty, and what the national proceedings can achieve in terms of certainty. 11. The public interest in dispelling the uncertainty surrounding the validity of monopoly rights conferred by the grant of a patent is also a factor to be considered. 12. In weighing the balance it is material to take into account the risk of wasted costs, but this factor will normally be outweighed by commercial factors concerned with early resolution. 13. The hearing of an application for a stay is not to become a mini-trial of the various factors affecting its grant or refusal. The parties’ assertions need to be examined critically, but at a relatively high level of generality.” (4) Although this guidance is, self-evidently, concerned with the question of a stay, rather than with the re-opening of a prior order of the court, the guidance in IPCom clearly demonstrates the inter-connectedness of the two jurisdictions. It is absolutely clear that the existence of revocation proceedings before the EPO is a factor in and of itself capable Whether it does in fact justify a stay depends on a consideration of all the factors set out in paragraph 50(3) above. of justifying a stay of proceedings in England involving revocation of the same patent. To this extent, therefore, I reject the contention made by Neurim that the16 December 2020 Orders cannot be revisited because the “UK proceedings are separate and distinct from those at the EPO”
“18. On the facts of these proceedings, there is nothing that can be relied upon which makes a significant difference, let alone a material difference, to justify changing the original costs order. The “material change of circumstances” that Mylan seeks to rely on is the revocation of the Patent. But those circumstances were precisely what was before the Court on 16 December. Both the parties and the Court expressly considered the alternative outcomes of the TBA hearing: (a) that the Patent was valid; Neurim contended that this reasoning was “unimpeachable” (b). that the Patent was invalid; and (c). exceptionally, that the matter would not be finally determined. 19. This was discussed at some length in the context of the discussions about the framing of the injunction, see the transcript at p.110 line 24 to p.115 line 9. What is clear that both parties and the Court had in mind and expressly addressed the possibility of the Patent being invalid in the light of the TBA hearing. 20. This ought to be the end of the matter. In fact, all that has happened is that one of the anticipated outcomes of the 16 December Order has been realised (or “crystallised”). This is the very opposite of a material change of circumstances.”
“...the Court will be aware that the Claimants have put in place a new agreement which they contend overcomes what were held to be the issues with the previous agreements...”
“The judge must look closely at the facts of the particular case before him and ask: who, as a matter of substance and reality has won?” “Success” is not a not technical term – it is the “result in real life”, to be determined “with the exercise of common sense”
“24. There is, thus, a particular form of finality that attaches to final decisions at first instance. It is important to differential final decisions from interlocutory decisions, and appeals from decisions at first instance. i)CPR 3.1 (7) lists as one of the court’s general powers of case management the power to vary or revoke a prior order made. It is very clear that this provision cannot generally be used to vary or revoke final orders (that is, orders that give rise to a res judicata estoppel) and equally clear that even interlocutory decisions will generally only be varied or revoked where either (a) there has been a material change of circumstance since the original order was made or (b) where the facts on which the original decision was made were (innocently or otherwise) misstated: Tibbles v. SIG plc... ii) The proper route for reviewing a decision – particularly a final decision – is through the appeal process. It is trite, however, that appeals are not generally rehearings but reviews of the lower court...New factual evidence, not before the lower court, will generally only be admitted where “special grounds” are met. In the civil courts, these are described in Ladd v. Marshall,[1954] 1 WLR 1489 . These “special grounds” are: (a) the evidence could not have been obtained with reasonable diligence for use at the trial; (b) the evidence must be such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive; and (c) the evidence must be such as is presumably to be believed: it must be apparently credible, although it need not be incontrovertible. Family courts apply a more liberal version of this rule, but the general point holds good. i)CPR 3.1 (7) lists as one of the court’s general powers of case management the power to vary or revoke a prior order made. It is very clear that this provision cannot generally be used to vary or revoke final orders (that is, orders that give rise to a res judicata estoppel) and equally clear that even interlocutory decisions will generally only be varied or revoked where either (a) there has been a material change of circumstance since the original order was made or (b) where the facts on which the original decision was made were (innocently or otherwise) misstated: Tibbles v. SIG plc... ii) The proper route for reviewing a decision – particularly a final decision – is through the appeal process. It is trite, however, that appeals are not generally rehearings but reviews of the lower court...New factual evidence, not before the lower court, will generally only be admitted where “special grounds” are met. In the civil courts, these are described in Ladd v. Marshall,[1954] 1 WLR 1489 . These “special grounds” are: (a) the evidence could not have been obtained with reasonable diligence for use at the trial; (b) the evidence must be such that, if given, it would probably have an important influence on the result of the case, though it need not be decisive; and (c) the evidence must be such as is presumably to be believed: it must be apparently credible, although it need not be incontrovertible. Family courts apply a more liberal version of this rule, but the general point holds good. 25. Apart from appeals, and without intending to be exhaustive, there are two main ways in which a final judgment that gives rise to a res judicata estoppel can be re-visited by a party who would otherwise be bound by or estopped from challenging that decision in other litigation. These are where: i) A party seeks to have a judgment set aside on grounds that it was fraudulently obtained: Takhar v. Gracefield Developments Limited,[2019] UKSC 13 ; ii) New facts come to light that fundamentally change the complexion of the case. This is the ratio of Phosphate Sewage Company Limited v. Molleson,(1879) 4 App Cas 801 at 814, where Lord Cairns LC held: “As I understand the law with regard to res judicata , it is not the case, and it would be intolerable if it were the case, that a party who has been unsuccessful in a litigation can be allowed to re-open that litigation merely by saying, that since the former litigation there is another fact going exactly in the same direction with the facts stated before, leading up to the same relief which I asked for before, but it being in addition to the facts which I have mentioned, it ought now to be allowed to be the foundation of a new litigation, and I should be allowed to commence a new litigation merely upon the allegation of this additional fact. My Lords, the only way in which that could possibly be admitted would be if the litigant were prepared to say, I will shew you that this is a fact which entirely changes the aspect of the case, and I will shew you further that it was not, and could not by reasonable diligence have been, ascertained by me before.””