A number of applications for expedition came before the Patents Court in 2021. In this article, we set out the overriding principles governing expedition and identify some key themes on how the Patents Court will apply such principles in practice, based on the recent case law. We also consider the potential interplay between expedition of UK proceedings and other national proceedings, or opposition proceedings at the European Patent Office (“EPO”). Finally, we set out some practice points for those considering seeking expedition.
What is expedition?
Annex D of the Patents Court Guide notes that the Patents Court aims to bring cases to trial within 12 months of the claim being issued. However, our experience from acting in cases recently indicates that, owing to the current constraints of the Patents Court Diary, some cases are being listed for trial up to around 18 months after the issue of a claim.
Under certain circumstances, where the Court is satisfied that there is objective urgency and sufficient justification for prioritising a particular case over others in the list, the Court may make an order for expedition, so that a case is brought to trial earlier than it would have been, had it been listed in the ordinary manner. As a consequence, the timetable to trial is often truncated and some procedural steps may be omitted in their entirety, for example, allowing less time for the preparation of evidence or dispensing with the service of reply evidence.
The law of expedition
The law on expedition is well-defined and, in the cases reviewed for the purposes of this article, the applicable principles were generally agreed between the parties. The leading case is Gore v Geox [2008] EWCA 622. In that case, the Court of Appeal outlined four factors (the “Gore factors”) that the Court must take into account when considering whether to grant expedition:
- Whether the applicants have shown good reason for expedition;
- Whether expedition would interfere with the good administration of justice;
- Whether expedition would cause prejudice to the other party; and
- Whether there are any other special factors.
Many of the cases also referred to the more recent decision of Mr Justice Birss (as he then was): Nicoventures v Philip Morris [2020] EWHC 1594 (Pat). In this decision, Birss J added some other important considerations to the Gore factors, including the fact that there must be a good reason for “queue-jumping” and “a mere wish for commercial certainty is not enough”.
The consideration of whether to grant expedition is highly fact-dependent and most of the judgments focus on the exercise of balancing the interests of each of the parties, as well as the interests of other Court users.
THEMES EMERGING FROM THE CASES
1) The Court is willing to grant expedition
In 3 of the 5 cases that we reviewed, some degree of expedition was granted. Although parties will not always be granted the degree of expedition they request, it is clear from the recent case law that the Court is open to speeding up the proceedings where there is sufficient justification to do so, despite a very busy Patents Court Diary.
2) Expedition is not a binary consideration
As well as making a decision as to whether expedition should be granted, the Court will also determine what degree of expedition would be appropriate.
As noted by Meade J in Teva v Janssen [2021] EWHC 1922 (Pat), when he granted what he called “a modest and appropriate degree of expedition”, the factors relevant to expedition are not binary, and there is also a question of degree. At paragraph 6, he notes:
“All of these matters are to be assessed on a sliding scale. There could be a good reason for expedition or a really, really good reason for expedition. There can be a requirement for a modest degree of expedition, or there can be a requirement for a lot of expedition. None of these things, therefore, is a binary consideration”.
This passage was cited by Mellor J in Advanced Bionics v Med-El (infra), who considered this to be a useful characterisation of the interplay between the Gore v Geox factors.
3) “Queue-jumping” is the exception, not the rule
It was clear from the cases that we reviewed that the Court is not willing to grant expedition at the expense of other litigants, without exceptional circumstances. For example, in Teva v Janssen, Meade J noted that “ejecting some other litigant from the list through no fault of their own” would be a “major step to take”. The capacity of the Patents Court Diary was a large consideration in all the judgments reviewed and, in those cases where expedition was granted, it was only to a degree which would not prejudice other Court users.
4) Parallel proceedings may reduce risk of prejudice
In both Abbott v Dexcom [2021] EWHC 2246 (Pat) and Advanced Bionics v Med-El [2021] EWHC 2415 (Pat), expedition was granted such that the timetable to trial was compressed to less than a year from claim issue. In Abbott, it was noted that a compressed timetable to trial would only cause minor prejudice to Dexcom, as they would still have adequate time to prepare, particularly given that there were parallel proceedings relating to similar issues elsewhere. A similar point was made in Advanced Bionics, as Med-El was already familiar with Advanced Bionics’ product (having already filed an infringement brief in Germany), and had also been involved in EPO proceedings relating to the same patent and prior art – it was therefore held that Med-El would not suffer any prejudice from the shorter timetable to trial.
5) Short and sweet
The Court is generally more able, and hence more willing, to expedite shorter trials than longer trials, as there are often small gaps in the Patents Court Diary during which such trials can be accommodated. In Abbott v Dexcom, one of the factors against expedition was the number of patents in issue and the estimated trial length of 8-9 days, which was difficult to fit into the Court diary any earlier.
If trial duration might be a barrier to expedition, parties may wish to consider whether a trial on a preliminary issue (with a shorter duration) could be expedited, instead of the full trial, in particular if the preliminary issue could be determinative of the action. This was the case in Neurim v Mylan [2021] EWHC 2198 (Pat): Neurim applied for an expedited trial in relation to a preliminary issue of estoppel.
6) The simpler the better
In the Patents Court, cases given a technical complexity of “category 3” and under can be heard by a Deputy Judge and hence are more likely to be expedited, as there is a greater likelihood of a Deputy Judge being available. Category 4 and 5 cases can only be heard by Patents Court judges and hence there is likely to be less availability for the Court to accommodate the expedited trial. This was noted in Abbott v Dexcom, where the parties were not agreed as to whether the trial was category 3 or category 4. In this case there was some discussion of the comparative difficulty of listing a category 4 trial, where it would need to “float”[1] across an entire court term and possibly a second term until a Patents Court judge became available, compared to the more straightforward process for listing a category 3 trial assigned to a Deputy Judge, where it was likely that there would be more availability of Deputy Judges to hear trials, and thus the trial would potentially be able to be given a firmer listing sooner.
7) Flexibility is key
In Philips v Xiaomi [2021] EWHC 2170 (Pat), Mellor J noted that an expedited trial would need to float indefinitely in order to be accommodated into the Patents Court Diary, as a specific window could not be given. The parties were not satisfied with this approach, preferring a more certain timetable to trial, and hence accepted that expedition of the trial to a date prior to patent expiry could not be achieved in that case. Similarly, in Abbott v Dexcom, it was noted that for a trial to be expedited into the Hilary term, it would need to float across the entire term and possibly the following term. Expedition was ultimately not granted for other reasons but, if it had been, the parties would have needed to be incredibly flexible in their preparations for trial.
8) An injunction gap alone is not enough
In certain jurisdictions with bifurcated systems, most notably Germany, where infringement and validity are dealt with at separate times, and by separate courts, there is a possibility that an injunction may be granted in the infringement action several months before the validity of the patent is determined. The injunction gap is often argued to be a “good reason” for expedition (in the UK) where there is parallel litigation in the UK and in, e.g., Germany. The argument is that, in these cases, an early UK validity decision may be beneficial to the parties, as it may be taken into account by the German infringement court, when deciding whether to enforce or stay an injunction.
The case law is clear that this so-called “injunction gap” is one factor to take into account but is not a decisive factor on its own (it being a consequence of how the German patent system has chosen to conduct itself). Birss J explicitly stated this in Nicoventures v Philip Morris and it is clear from the more recent case law that this principle still applies. The “exportability” of a judgment to another jurisdiction is not reason enough for the Patents Court to grant an expedited trial, but it will be a relevant factor where, for example, the effect of a German injunction could potentially prejudice the alleged infringer in the UK.
For example, in Advanced Bionics v Med-El, Mellor J was persuaded that an injunction in Germany and the removal of Advanced Bionics’ (“AB”) product from the German market would dissuade doctors and patients in the UK from choosing AB’s product, for example, due to concerns on the availability of replacement parts. Mellor J found that this would likely cause irreparable damage to AB’s business in the UK and so trial was expedited.
9) Undertakings can be crucial
In Abbott v Dexcom, one of the key issues related to Abbott’s distribution hub in Germany and the effect of this on the UK market. However, Dexcom offered an undertaking not to enforce a German injunction against the distribution of products to the UK. Mellor J held that this would give Abbott sufficient commercial certainty in the UK and refused the request for expedition.
Interaction with EPO proceedings
There is no requirement in the UK that a patents trial be stayed while EPO proceedings are pending, and nor is there a general rule that the UK court must expedite cases to ensure the UK case is decided ahead of the EPO case, particularly where the EPO proceedings are only at the Opposition Division (“OD”) phase. Rather, the timing of pending proceedings before the EPO (or indeed, ongoing parallel litigation in other jurisdictions) is just one of the factors to be considered by the Patents Court in deciding whether to order expedition. The Patents Court has been willing to expedite UK cases despite there being ongoing proceedings before the EPO, particularly if this would bring commercial certainty to the parties in the UK sooner. Part of the justification behind this is that any EPO decision will not necessarily be determinative of the issues between the parties: first instance Opposition Division decisions can be appealed before the Technical Boards of Appeal (“TBA”), and this process can take an extra year or more (even if the appeal proceedings are accelerated). Even then, a final decision on validity from the TBA is not necessarily determinative of the issues as it does not preclude a finding of invalidity by the national courts.
However, the timing of co-pending EPO proceedings can generate challenging outcomes for the parties and the Court, as evidenced by the ongoing dispute between Neurim and Mylan. The unusual fact pattern of this case saw Neurim bringing an infringement action before the UK Patents Court at the same time that it received a finding of invalidity from the EPO’s Opposition Division. The trial was expedited because the TBA hearing had been anticipated to take place in 2022, after the patent was due to expire, and both parties wanted commercial certainty. In fact, the TBA hearing was subsequently accelerated, such that the Patents Court found Neurim’s patent valid and infringed (Neurim v Mylan [2020] EWHC 3270 (Pat)) just two weeks before the TBA indicated that the patent was invalid for insufficiency. Neurim withdrew its appeal before the TBA, and the patent was revoked at the EPO. Generally, a finding of validity and infringement in national litigation is treated as separate and distinct, and earlier orders made by the Patents Court are not revisited if the patent is subsequently held to be invalid by the EPO. However, the unusual timing of this case required the Court to take a different approach.
In the aftermath of the 2020 litigation, Marcus Smith J noted in his Consequentials Judgment of 12 March 2021 (Neurim v Mylan [2021] EWHC 530 (Pat); para 9(d)) that he felt the parties should have brought the issue of expedition back before the Court after the TBA hearing was accelerated. The new date was almost 18 months before the date the parties had expected it to take place when they sought expedition, and had the Patents Court known, it would likely have influenced the decision to expedite the trial. Quoting from the transcripts of a hearing that took place in December 2020, shortly after the TBA’s decision, Marcus Smith J said at paragraph 9(d) “I think, that if we had known that the EPO appeal would be determined at about the same time as these proceedings, Nugee J, as he then was, would not have ordered expedition. It would have been pointless.”[2]
In the most recent decision in the saga (Neurim v Mylan [2022] EWHC 109 (Pat)), Meade J went further in setting out the obligations of parties who are engaged in co-pending proceedings to keep the UK Court apprised of what is happening at the EPO, including updating it if timings change. Following an expedited hearing of preliminary issues relating to a Neurim divisional patent (a divisional of the parent patent litigated in the 2020 proceedings), Meade J stated at paragraph 181 that “parties in litigation in the Patents Court where there are parallel EPO proceedings should regard themselves as under a duty to inform the Court about scheduling issues and scheduling changes, whether or not they intend to make a case management application themselves and whether or not it suits their strategy” (emphasis added).[3]
Practical points
The Patents Court has recently indicated that it hopes to revert back to its previous practice of having patents trials heard within 12 months of issue, and to that end, is more willing to accommodate early listing requests before the Case Management Conference. If trial dates are set earlier in the life of the case, and within the Patents Court’s desired 12 month timeframe, then it is likely that there may be fewer expedition requests in the future. However, there will still be some cases requiring expedition, and we have distilled below some practical lessons we have picked up from the recent cases discussed above.
- Applications for expedition can be made at a PTR, or as a standalone application.
- As set out in section 12.7 of the Patents Court Guide and section 17.6 of the Chancery Court Guide, applications for expedition must be made as soon as possible.
- As in recent years, the Patents Court is set to be extremely busy in 2022 so the sooner applications are made, the more likely it is that expedited trials may be accommodated.
- Before making an application for expedition, parties should consider whether a reduction in trial duration could be achieved. For example, if expedition is the primary concern, parties could consider reducing the number of pieces of prior art, dropping weaker invalidity attacks, admitting certain issues (e.g., infringement) and/or reducing the number of testifying experts.
- Parties should also carefully consider the technical complexity of their case when seeking expedition, particularly if a case is considered to be either category 3 or category 4. As explained above, category 3 cases (and lower) can be heard by a Deputy Judge and hence are more likely to be expedited.
- Parties may alternatively wish to consider whether a trial on a preliminary issue (with a shorter duration) could be expedited, instead of the full trial, in particular if the preliminary issue could be determinative of the action. This was the case in Neurim v Mylan [2021] EWHC 2198 (Pat): Neurim applied for an expedited trial in relation to a preliminary issue of estoppel.
- As an alternative to expedition, parties may also wish to consider at the outset of litigation whether a case might be suitable for the Shorter Trials Scheme, which aims to achieve shorter and earlier trials, at reasonable and proportionate costs, by limiting disclosure and evidence. The aim of the Scheme is for cases to reach trial within approximately 10 months of proceedings being issued, and for judgment to be handed down 6 weeks thereafter.
- Following Meade J in Neurim, parties are under a duty to keep the court apprised of significant changes to the timing of co-pending EPO litigation, if it appears that a final decision of the TBA could be reached at a similar time to national litigation. Not to do so could bear significant costs implications.
[1] In many cases in the Patents Court, trials are listed to “float” in a particular window, meaning that the start date of trial can be any date within a particular window prescribed by the Court.
[2] Neurim v Mylan [2021] EWHC 530 (Pat); para 9(d)
[3] Neurim v Mylan [2022] EWHC 109 (Pat); para 181
