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Leave to appeal not granted more readily in patent cases

In the recent case of Teva UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG [2016] EWCA Civ 1296 the Court of Appeal held that the approach to granting permission to appeal in patent cases as previously set out in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588 should no longer be followed (and is not followed in practice in any event) and that CPR 52.3(6) was a uniform standard to be applied to all applications for permission to appeal.

In the recent case of Teva UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG [2016] EWCA Civ 1296 the Court of Appeal held that the approach to granting permission to appeal in patent cases as previously set out in Pozzoli SPA v BDMO SA [2007] EWCA Civ 588 should no longer be followed (and is not followed in practice in any event) and that CPR 52.3(6) was a uniform standard to be applied to all applications for permission to appeal.

Background

Permission to appeal can be given under CPR 52.3(6) where:

"(a) the court considers that the appeal would have a real prospect of success; or

(b) there is some other compelling reason why the appeal should be heard."

There is nothing in the CPR which states that a different standard should be applied for granting permission to appeal in patent cases.

However the White Book cites the case of Pozzoli as authority for the position (and title of paragraph 52.3.13) that "Permission to appeal may be granted more readily in patent cases". This was on the basis of Jacob LJ's judgment:

"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… Faced with an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission".

As summarised by Floyd LJ in Teva, the decision in Pozzoli was that in highly technical cases a trial judge ought to grant permission to appeal more readily and that the fact of technical complexity may make an appeal judge more ready to grant permission to appeal where the judge has refused it.

In contrast to patent cases, the White Book states that permission to appeal is granted more sparingly for appeals on questions of fact from the Technology and Construction Court ("TCC"). The authority for this is Skanska Construction UK Ltd v Egger (Barony) Ltd [2002] EWCA Civ 1914 where it was held that "findings of fact often fall within an area of specialist expertise… which is the evidence of a kind which judges of the Technology and Construction Court are particularly well placed to assess".

Teva concerned an action for revocation of a patent. At first instance Morgan J held that the amended claims sought by the defendant would be obvious and refused leave to appeal. The defendant sought leave from the Court of Appeal who requested arguments from both sides as to whether the practice reported in the White Book based on Pozzoli is correct and whether it is followed in practice.

Decision of the Court of Appeal

The main judgment was given by Floyd LJ, with whom Kitchen LJ agreed (both former Patents Court judges). In conclusion the Court of Appeal refused permission to appeal and held that "the technical complexity of the background is not a factor which trial judges should take into account in favour of granting permission to appeal" and therefore the approach in Pozzoli should no longer be followed.

Floyd LJ stated that appeals from the Patents Court should be viewed in the same way as those from the TCC because "judges of the Patents Court are a specialised group of judges who are nominated to hear cases of this kind". Due to the "evaluative judgments" and "technical considerations" involved in the first instance decision Floyd LJ stated that "This court will not interfere with the judge's evaluation unless he has erred in principle".

Morgan J said that he did not place much reliance on Pozzoli in refusing permission. Floyd LJ mentioned this was consistent with the general approach in practice based on the evidence given by counsel in this case and practitioner texts that "normally decisions on permission to appeal are based on the criteria in the CPR, namely whether the appeal has a real prospect of success".

Floyd LJ considered the public interest involved in patent cases. He concluded that "whilst the public interest aspect of patents justifies painstaking analysis of the issues which arise, including the grant or refusal of permission to appeal, it does not justify a different, more lenient, approach to granting of permission to appeal".

Also Floyd LJ mentioned that the CPRs have "moved on" since Pozzoli and as such it "would be wrong for a judge to give or refuse permission without being sure that there is, or is not, an arguable point, simply because of the technical or other complexity of the case".

Comment

The case itself does not change the current position since both sides informed the court that Pozzoli was not applied by first instance patent judges in practice.

However this decision provides very useful guidance on how the courts should assess whether to grant leave to appeal in patents cases. It emphasises the expertise of the Patents Court judges, recognises that they are in the best position to make decisions on factual findings and confirms that CPR 52.3(6) is a "uniform and mandatory minimum standard". This formally brings patent appeals into line with other cases to ensure a consistent approach to granting permission to appeal.

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