International Patent Litigation - Abbott Laboratories Ltd v Dexcom Inc
This was an application for an order to expedite the trial of an action that Abbott Laboratories Ltd. ("Abbott") had begun 2 days earlier against Dexcom Inc ("Dexcom") for the revocation of 4 of Dexcom Inc's European patents. The reason for the action and application is that Dexcom had brought proceedings for the infringement of those patents in Germany. The trials of those actions were likely to take place between early March and the end of April 2022. In Germany, unlike the United Kingdom, it is not possible to challenge the validity of a patent in infringement proceedings. Alleged infringers who wish to challenge the validity of the patent they are alleged to have infringed must bring opposition proceedings in the European Patent Office under art 99 of the European Patent Convention or start separate revocation proceedings in Germany. If a German court finds that a patent has been infringed it will usually grant an injunction which remains in force unless and until the patent is revoked. The time-lapse between judgment in an infringement action and judgment in opposition in revocation or opposition proceedings is sometimes called "the injunction gap".
One way of persuading a German court not to injunct an alleged infringer is for that party to produce a finding of a foreign court that the corresponding patent is invalid. Abbott's application for expedition was launched on 14 July 2022. It was heard by Mr Justice Mellor between 28 and 30 July 2022. His lordship gave judgment in Abbott Laboratories Ltd v Dexcom Incorporated [2021] EWHC 2246 (Pat) on 6 August 2021. At para [8] he remarked that expedition of a patent action in England to reduce the risk of an injunction in Germany had been considered many times. The most recent occasion in which the issue arose was Nicoventures Trading Limited v Philip Morris and another [2020] EWHC 1594 (Pat) which I discussed in International Patent Litigation - Nicoventures Trading Ltd v Philip Morris on 16 July 2020.
In Nicoventures Mr Justice Birss referred to paras [16] and [17] of Lord Justice Vos's judgment in James Petter v EMC Europe Limited [2015] EWCA Civ 480:
"[16]. … The correct principles have been debated between the parties but do not seem to me to be much in doubt. The court exercises its discretion to expedite proceedings against the backdrop that the courts are busy and that expediting once case will often slow the progress of others. For that reason, the overriding objective requires that there should be a good reason for expedition. But the categories of case in which expedition is appropriate are not closed. There may be many and varying situations in which expedition will be held to be just and appropriate, taking into account all aspects of the overriding objective and the court’s resources, and the interests of other court users in particular.
[17] Thus, as the judge was well aware from the authorities that had been placed before him, expedition will only be justified on the basis of real, objectively viewed, urgency. It is against that background that Neuberger LJ’s four factors from W.L. Gore supra are to be considered, namely (1) whether the applicants have shown good reason for expedition; (2) whether expedition would interfere with the good administration of justice; (3) whether expedition would cause prejudice to the party; and (4) whether there are any other special factors."
"[16]. … The correct principles have been debated between the parties but do not seem to me to be much in doubt. The court exercises its discretion to expedite proceedings against the backdrop that the courts are busy and that expediting once case will often slow the progress of others. For that reason, the overriding objective requires that there should be a good reason for expedition. But the categories of case in which expedition is appropriate are not closed. There may be many and varying situations in which expedition will be held to be just and appropriate, taking into account all aspects of the overriding objective and the court’s resources, and the interests of other court users in particular.
[17] Thus, as the judge was well aware from the authorities that had been placed before him, expedition will only be justified on the basis of real, objectively viewed, urgency. It is against that background that Neuberger LJ’s four factors from W.L. Gore supra are to be considered, namely (1) whether the applicants have shown good reason for expedition; (2) whether expedition would interfere with the good administration of justice; (3) whether expedition would cause prejudice to the party; and (4) whether there are any other special factors."
Mr Justice Birss added the following points in relation to applications for expedition in order to forestall German infringement proceedings which Mr Justice Mellor mentioned at para [8] of his judgment:
"i) First, in [11] he noted that 'There are likely to be a large number of litigants in the Business and Property Courts who would like their cases to be tried earlier, therefore granting expedition involves an inevitable degree of queue-jumping and therefore there has to be a good reason for it,' such that the Court decides applications for expedition 'according to the relevant principles and not simply by approaching them on the basis that someone who happens to come to court wishing for their case to be speeded up will get it.'
ii) Second, in [12] he emphasised that 'a mere wish for commercial certainty is not enough to justify expedition.' Rather, he said, there needs to be a 'good reason' which must be 'established in evidence.'
iii) Third, in [13] he considered reliance on the German ‘injunction gap’ as a basis for expedition. He concluded (in [21]) that 'the courts will take this factor into account as a factor, but it is never enough on its own.'"
"i) First, in [11] he noted that 'There are likely to be a large number of litigants in the Business and Property Courts who would like their cases to be tried earlier, therefore granting expedition involves an inevitable degree of queue-jumping and therefore there has to be a good reason for it,' such that the Court decides applications for expedition 'according to the relevant principles and not simply by approaching them on the basis that someone who happens to come to court wishing for their case to be speeded up will get it.'
ii) Second, in [12] he emphasised that 'a mere wish for commercial certainty is not enough to justify expedition.' Rather, he said, there needs to be a 'good reason' which must be 'established in evidence.'
iii) Third, in [13] he considered reliance on the German ‘injunction gap’ as a basis for expedition. He concluded (in [21]) that 'the courts will take this factor into account as a factor, but it is never enough on its own.'"
His lordship quoted paras [14] to [19] of Nicoventures. The last of those paragraphs encapsulates the rule:
"A party should, if it wishes to seek expedition, put forward evidence of the commercial context in which the dispute arises in order to establish why there is a good reason in commercial terms, if true, that the UK validity trial should be timetabled in the way that is sought. In other words, and I am probably repeating myself, if a party seeks expedition it will always need to support its application with evidence of a commercial context to explain why, in the words of James Petter and Gore v Geox, there is a good reason for expedition."
The judge applied the four factors in Gore in a different order, because they required the balancing of the reasons in favour of expedition against the interference with the administration of justice, prejudice to others and any special factors against expedition. Considering first whether expedition would interfere with the good administration of justice, he decided that it would not. He formed that view even though the lists were full and expedition would involve queue jumping because the case could be listed before a deputy judge. As for whether expedition would cause prejudice to a party, he decided that expedition would cause some prejudice to Dexcom, but that would be minor in view of the extensive litigation on which Dexcom had already decided to embark. Next, the judge considered whether the applicants had shown good reason for expedition. Abbott argued that the revocation action would clear the way for the launch of a product known as a "Freestyle Libre 3 product". Dexcom pointed out that the product launch would take place before the date proposed for the expedited trial. The second reason was that expedition would anticipate the German injunction gap. Dexcon offered an undertaking not to enforce any injunction it might be granted if Abbott would do the same in respect of any injunctions that it might be granted against Dexcom, Abbott's refusal to grant a parallel undertaking would mean that Dexcom would be at risk but Abbott would not. Mr Justice Mellor regarded that to be a special factor against expedition.
His lordship decided that Abbott had shown insufficient reason for him to grant expedition. He dismissed the application, He said at [61] that he had reached his conclusion with some regret, but the authorities were clear and they did not allow him to assist Abbott.
Anyone wishing to discuss this case may call me on 020 7404 5252 during normal business hours or send me a message through my contact form.
Comments