“Appeals are against orders, not reasoned judgments In a number of cases it has been has stated that the function of an appeal court, in particular of the Court of Appeal, is to deal with “judgments”, “orders” or “determinations”, that is to say, to deal with the “result” or “outcome” (to use non-technical terms) of the hearing in the lower court, and not with “findings” or “reasons” given in the judgment; see e.g. Compagnie Noga d’Importation et d’Exportation SA v Australia and New Zealand Banking Group Ltd (No.3)[2002] EWCA Civ 1142 ; [2003] 1 W.L.R. 307, CA; Morina v Secretary of State for Work and Pensions[2007] EWCA Civ 749 ; [2007] 1 W.L.R. 3033, CA, at para. 6 per Maurice Kay LJ. The law in this respect restricts “winner’s appeals” and is in part based on theSenior Courts Act 1981 s.16 (Appeals from High Court).”
“1. This appeal raises an important point in relation to the position of a respondent to an appeal and in particular as to the circumstances where a respondent needs permission to raise points in a respondent's notice. In particular it raises the question whether a judge should grant a declaration in relation to a conclusion to which he had come on the facts (the trial of which had taken up most of the time of the court), albeit he had found despite that conclusion that the respondent should succeed at first instance. In this case Noga (for whom Mr Gee QC appeared both here and below) had sought a declaration that an action had been compromised in return for payment of the sum of$100 million by the SJ Berwin Defendants (for whom Mr Pollock QC appeared both here and below). Noga also sought a judgment for$100 million . In considering whether a valid compromise had been reached, a key issue was whether$100 million had either been agreed or even mentioned, and a further issue was whether if it had, the agreement was only conditional. After a lengthy trial the judge concluded that the$100 million had both been mentioned and indeed agreed, but also held that the agreement was only conditional, and thus that no valid compromise had been reached. Noga sought to get him to change his mind about the conditional nature of the agreement which the judge refused. He did however give Noga permission to appeal on the conditional aspect. The position of the SJ Berwin defendants was that as respondents they would seek to uphold the judge's conclusion that there was no settlement agreement on the basis that his findings of fact in relation to the$100 million were wrong, and that no permission to appeal was needed for them to be entitled to confirm his judgment on those grounds in the Court of Appeal. Both parties accepted before the judge that if the form of declaration made by the judge was limited to declaring that “no settlement had been concluded”, the SJ Berwin defendants were right. The judge (who it is right to say even at this stage was resistant to the notion the SJ Berwin defendants were right), following a suggestion of Mr Gee inserted as part of the declaration “no settlement”, a declaration that he found that the$100 million had been agreed. On that basis the SJ Berwin defendants accepted that they would now need permission to appeal, and albeit protesting the form of declaration, applied for permission. That permission was refused by the judge, but the judge gave permission to appeal his ruling as to the form of the declaration. This is the appeal from the ruling on the form of order, the reasons for which the judge gave in a written judgment of23 October 2001 known as Noga 3.”
“6. Although we have received no submissions discouraging us from hearing these appeals, it is common ground that our entitlement to do so is not beyond dispute and requires resolution. This is because of the traditional reluctance to permit an appeal at the behest of a litigant who succeeded below and who seeks to take issue with the reasoning of the decision rather than with its outcome.”
“Reasons These appeals arise in circumstances which are, so far as I am aware, unprecedented. Arnold J has held the 822 patent invalid, albeit that he granted permission to appeal. The 822 patent has subsequently been revoked by the European Patent Office. In normal circumstances there would be no possibility of an appeal to this court from the judgment of Arnold J, as the subject matter of the appeal no longer exists. Subsequently, however, Lilly has successfully relied on the findings made by Arnold J in relation to the 822 patent to obtain, in separate proceedings heard by Mr Wyand QC (“the 084 proceedings”), conditional summary revocation of the 084 divisional patent on the basis of issue estoppel. Mr Wyand QC considered and rejected an argument that it was unfair to allow reliance on the findings of Arnold J, given that it had been recognised that an appeal from the judgment would have a real prospect of success. Mr Wyand QC gave both parties permission to appeal. Neither side objects in principle to these appeals (from Arnold J’s revocation of the 822 patent) proceeding. However, in general, appeals are against judgments and orders, not findings: see e.g. Secretary of State for Work and Pensions v Morina and others[2007] EWCA Civ 749 at [6]. Given the impact of the findings made by Arnold J in the 822 proceedings on the 084 proceedings, I am persuaded that it is in the interests of justice, in the highly unusual circumstances of this case, to allow the appeals to go ahead. That does not mean that every issue which Arnold J decided is open to appeal. The appeals must be shaped by the purpose for which they are being allowed to proceed. The appeals should be restricted to the findings made by Arnold J which are relevant to the validity of the 084 divisional patent.”
“3. In support of [Mylan’s] contentions above in respect of abuse, [Mylan] relies upon paragraphs 2, 3, 5, 7, 8 and 9 of the Defence and Counterclaim and upon the following matters (separately and collectively): a. EP 1,441,702 (the “Parent Patent”) was in force until18 December 2020 when Neurim withdrew its appeal in EPO appeal proceedings T302/20 against the decision of the Opposition Division (“OD”) dated20 November 2019 revoking the Parent Patent, the effects of that decision having been stayed pending the appeal. b. The Technical Board of Appeal (“TBA”) had indicated that the Parent Patent was insufficient during the hearing on 17 and18 December 2020 (the "TBA Hearing"). On18 December 2020 the TBA expressed their opinion orally that the Parent Patent lacked sufficiency. Neurim then formally withdrew its appeal of the OD’s decision. As a result of Neurim’s withdrawal of its appeal, there has not been and will be no written assessment by the TBA of the sufficiency arguments presented at the TBA Hearing. The only ground of invalidity considered by the TBA at the TBA Hearing was article 83 (sufficiency). c. Neurim's withdrawal of the EPO appeal prior to a decision of the TBA was and was intended to be procedurally favourable to its prosecution of the Patent by shielding the Patent from a written decision of the TBA regarding the invalidity of the Parent Patent. This was confirmed by the evidence of Neurim's patent attorney, Mr Thomas Leonard, who acknowledged that the TBA's written decision could have had an adverse effect on the prosecution of the Patent. d. By withdrawing its appeal, Neurim accepted that the Parent Patent is invalid for anticipation by the Haimov prior art pleaded in [Mylan’s] Grounds of Invalidity and/or for insufficiency. e. In the premises, it is an abuse for Neurim to apply to put the form of the Patent into materially the same form as the Parent Patent. The Application therefore constitutes an abuse. The paragraphs of the Defence and Counterclaim to which reference back is made in the introductory part of the paragraph, are matters of factual background and/or repetitive of paragraph 3.”
“42. Furthermore, it is an abuse of the Court’s process for the Claimants to assert the same claim twice in the UK, having accepted that the Parent Patent was invalid at the EPO. As set out in the section on the law, above: “It is an abuse to bring vexatious proceedings, i.e. two or more sets of proceedings in respect of the same subject matter which amount to harassment of the defendant in order to make them fight the same battle more than once with the attendant multiplication of costs, time and stress”
“31. In the premises, the Claimants have pursued a strategy of: a. Appealing the OD’s decision; b. Seeking to enforce the Parent Patent in the UK, culminating in the Judgment; c. Withdrawing the appeal to the TBA: i. after the Judgment but before the Defendants could appeal the Judgment; and ii. to shield the Patent from a written decision of the Technical Board of Appeal in respect of the Parent Patent because such a decision would have “an adverse effect on the prosecution of [the Patent]” d. Seeking to enforce the Patent on the basis of issue estoppels said to arise from the Judgment.”
“a) whether the strategy and/or conduct pleaded in paragraphs 28 – 34 of the Defence and Counterclaim dated11 August 2021 (the “Defence”) would in principle constitute an abuse of a dominant position in the relevant markets within the meaning ofs 18(1) of the Competition Act 1998 as pleaded in paragraph 35 of the Defence;”
“33. Further, even if the Claimants do not obtain an injunction, the fact of seeking damages on the basis of the alleged issue estoppels imposes a contingent cost of competition on the Defendants, in the form of the possibility that they may need to compensate the Claimants for the loss of their opportunity to earn monopoly profits in this market, without ever having the opportunity to defend themselves from that claim. That contingent cost is a deterrent to effective competition in the Melatonin market, because each additional sale that the Defendants obtain through competition in the market gives rise to greater potential liability to the Claimants.”
“(4) An inquiry as to the damages equal to any damages that the Defendants are ordered to pay to the Claimants, as well as damages for lost profits from any period for which they are injuncted.”