This article was first published in EPLAW Patent Blog, February 2016

Celltrion Inc v (1) Biogen Idec Inc. (2) F. Hoffmann-La-Roche AG & (3) Genentech Inc., High Court of Justice of England and Wales, Patents Court (Carr J.), London UK, 22 January 2016, Neutral Citation Number: [2016] EWHC 188 (Pat) 

On 22 January 2016, Carr J granted the Claimant’s application for an order that its claim for the revocation of three patents be listed for trial before the Patents Court as close as possible to the 12 month anniversary of the action being commenced. This is in line with a Practice Statement issued by the Patents Court in December 2015 which states that “The Patents Court endeavours to bring patent cases on for trial where possible within 12 months of the claim being issued” and sets out a mechanism for this to happen.

In these proceedings the Claimant sought the revocation of three patents owned by the Defendants. The patents relate to dosage regimes for use of the monoclonal antibody rituximab; two for the treatment of chronic lymphocytic leukemia (CLL); and the third for the treatment of rheumatoid arthritis (RA). Carr J ordered that the proceedings be heard as two separate 5 day trials, split based on the subject matter of the three patents in suit. In its application, the Claimant argued that the Defendants had delayed in engaging with the Claimants over listing of the trial. The Claimant also criticised the Defendants for obtaining a 30 day extension from the Court for filing their Defence to the revocation claim, a simple document. In response, the Defendants argued that the proceedings had been served on them on 30 November and by the time counsel were instructed on 15 December they had little availability due to the Christmas holidays. Further, it was premature to list the trials before the Defendants had filed their Defence as the issues in dispute between the parties were unclear and therefore, how long a trial would take, what expert evidence would be required, and whether the proceedings should be split as two trials or one single trial, was uncertain.

Carr J referred to the above Practice Statement and noted that as soon as a claim has been served, the parties are expected to attempt to agree between themselves appropriate dates for trial based on the Court’s diary at that time. (In the normal course of events, the dates for trial would then be set at the case management conference (CMC) which takes place after the close of the initial round of pleadings).

Carr J granted the application for the 12 month timetable on the basis that:

(1) the Defendants were unlikely to be prejudiced by this timetable in that they had experience with very similar issues in opposition proceedings relating to these patents before the EPO, and were, in any case, due to file their Defence within 3 days of the application being heard; and (2) the Court diary could accommodate two 5 day trials in late 2016.

Carr J granted the split trial on the basis that: (1) whilst there was some overlap between CLL and RA, there are also significant differences between the two indications. Therefore, although the same experts may give evidence on both the CLL and RA patents, the subject matter of that evidence would be different; (2) the priority dates of the CLL patents and the RA patent differed by 7 years which would make it preferable to hear the trials separately to avoid confusing the common general knowledge at the two relevant dates.

Carr J also noted that given the trials had been listed within 12 months of being issued, the Claimant may find it difficult to persuade the Court that the Defendants should give wide-ranging disclosure. Further, the parties were both under a duty to inform the Court at the CMC should it become apparent that the trials would take longer than 5 days each (it would then be open to the Court to relist the trials to a later date should the circumstances warrant it).

A copy of the decision can be found here.