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Appeals in English patent cases – no more special treatment

Although patent cases are often technically complex, the English Court of Appeal has held that they are no longer entitled to special treatment when it comes to permission to appeal. In this article we consider the historical approach of the English courts to patent appeals, the recent decision of the Court of Appeal in Teva UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG [2016] EWCA Civ 1296 which brought an end to the special treatment of patent cases, and the practical implications.

In the English Patents Court, appeals are not available as of right: permission to appeal must be granted either by the Patents Court itself or, if the Patents Court refuses permission, by the Court of Appeal. The grant of permission to appeal can be of huge practical importance, for a number of reasons: additional cost, delay in obtaining commercial certainty, and its impact on planning the timing of future litigation.

Until recently, the position in England (at least in theory) was that permission to appeal would be granted more readily in patent cases in light of their technical complexity. The rationale for this special treatment, as stated by Jacob LJ in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, was that:

"Unless the case is very clear and can be understood sufficiently readily in an hour or so, the better course is normally for permission to be granted by the trial judge. For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge. Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if it later discerns that the case is indeed clear."

Taken at face value, this apparent readiness to grant permission to appeal in patent cases would require parties to factor in the increased cost and additional delay of an appeal almost as a matter of course in their litigation planning. In Teva v Boehringer Ingelheim the Court of Appeal put an end to this approach, while doubting whether it had ever really been applied in practice.

Lord Justice Floyd, an experienced patent judge himself, noted that the Pozzoli approach was not in fact followed by judges in the Patents Court. Judges were simply applying the test in the Civil Procedure Rules, applicable to applications for permission to appeal in all civil cases, namely whether the court considers that the appeal would have a real prospect of success or there is some other compelling reason why the appeal should be heard. They were not granting permission more readily in patent cases on the basis that the Court of Appeal would find it difficult to form a full understanding of the technical issues.

Floyd LJ also noted that the procedural background had moved on since Pozzoli, with the Court of Appeal now able to direct the parties to provide focused submissions at an oral hearing and so in a better position determine whether an appeal has any prospect of success. The Court of Appeal held that the technical complexity of patent cases should no longer be a factor in favour of the grant of permission to appeal, and that there is no justification for treating patent cases any differently to any other cases.

As Floyd LJ noted in Teva v Boehringer Ingelheim, abandoning the special treatment of patent cases makes sense in light of the way that the substance of a patent case is determined, at first instance and appeal. Patent cases arise against a complex technological background and are (typically) determined at first instance by a specialist judge making evaluative judgments based on detailed technical evidence. The Court of Appeal will not interfere with the first instance judge's evaluation unless he or she has erred in principle, which suggests that permission to appeal ought to be granted relatively infrequently. In Teva v Boehringer Ingelheim itself the Court of Appeal refused permission to appeal, on the grounds that the applicant for permission was "seeking, illegitimately, to deconstruct the judge's overall evaluative judgment on the issue of obviousness" – the basis on which many appeals against patent decisions ultimately fail – and that none of the grounds of appeal had a real prospect of success.

The threshold for grant of permission to appeal has particular practical significance in the UK because preliminary injunctions, frequently granted in pharmaceutical cases, can be maintained pending appeal even if the patent is revoked at first instance ( see Novartis AG v Hospira UK Limited [2013] EWCA Civ 583). Although expedition is available in cases of urgency (for example, in Napp Pharmaceutical Holdings Limited v Dr Reddy's Laboratories (UK) Ltd & Anor [2016] EWCA Civ 1053 first instance and appeal decisions were obtained within 6 months), an appeal can take more than 18 months to determine, during which an injunction may continue to run.

Although Floyd LJ's view was that patent judges were not in fact granting permission to appeal any more readily in patent cases than other cases, the express disapproval of the Pozzoli approach in Teva v Boehringer Ingelheim is likely to result in even fewer applicants obtaining permission to appeal. This will result in a shorter period of commercial uncertainty or disruption in any given case where permission to appeal is refused, but the greater unpredictability as to appeals may make litigation planning more difficult for the future.