DECISIONS
PATENTS: UK
Patent decisions The UK patent court case reports are prepared by John Hull, Anna Hatt, Nick Bebbington, Deborah Hart, Matthew Ng and Sarah-Jane Crawford of Beck Greener. All the court decisions listed in this section are available on the free-to-use website www.bailii.org.
Strike out of appeal Regen Lab SA v (1) Estar Medical Limited, (2) Estar Technologies Limited, (3) Medira Limited, (4) Lavender Medical Limited and (5) Antoine Turzi [2020] EWCA Civ 451 24 March 2020 • Floyd LJ This decision relates to a telephone hearing to determine a number of applications made by both sides in the appeal against the first instance judgment of HHJ Hacon – [EWHC 63 (Pat), reported April [2019] CIPA 45. The judgment was discussed on the IPKat blog (http://ipkitten.blogspot.co.uk) on 23 April 2020. The appeal hearing was listed to commence on 1 April 2020. At first instance, HHJ Hacon had dismissed a patent infringement action brought by Regen against Estar in respect of EP(UK) No. 2073862. The judge had also revoked the patent based on a finding of lack of novelty by reason of prior use. The European Patent was found invalid in opposition proceedings at the European Patent Office. This decision had been appealed, but an expedited appeal had not been requested. Regen was granted permission to appeal the decision of HHJ Hacon by Floyd LJ, with Estar being given permission to cross-appeal by HHJ Hacon in the event that Regen obtained permission to appeal. Estar made an application in October seeking an order that, unless Regen paid the sums owed pursuant to orders for costs made in the court below, the appeal should be struck out. Estar also sought an order that, in the event that the appeal was to proceed, Regen should provide security for costs by payment into court. Regen made two applications sealed on 5 March 2020. The first was for a stay of appeal proceedings pending the final outcome of the EPO appeal and/or the final outcome of criminal proceedings in Switzerland against Estar. Regen also applied for an adjournment of the appeal hearing in the same application. In the second application, Regen requested seven heads of relief including a stay of execution in respect of all costs awarded to Estar, an order denying the relief sought on Estar’s applications, relief from the sanctions for failing to pay any costs to Estar, a refund to Regen for its costs in the present
application, security for Regen’s costs of the appeal, an order striking out the cross-appeal unless Estar paid the costs of the application within 14 days and if the sum for costs was paid, security for costs. At the time of the telephone hearing, Regen had failed to pay any costs relating to the hearing before HHJ Hacon despite a number of orders made by the judge. In addition, Regen had failed to provide any evidence to support its request to delay payment. Estar had provided evidence demonstrating that Regen had, following the judgment of HHJ Hacon, spent significant amounts of money on other litigation and product marketing. In addition, Regen had failed to respond to Estar’s applications for strike out and security of October 2019 until the applications of March 2020. Regen had also failed to file any appeal bundles that were due to be filed at court by 19 February, with no request for extension or explanation of the breach. Floyd LJ decided to refuse Regen’s application for a stay of proceedings. He considered that there were no grounds for a stay of the appeal pending the decision of the EPO or any other proceedings. He noted that there were stays in France and Germany, but pointed out that national procedural law is different in those jurisdictions and that the French stay was by consent. He also noted that Regen had delayed in bringing its stay application, when it could reasonably have been requested in the Notice of Appeal. Third, he noted that Regen’s conduct was highly inconsistent as it had sought to pursue Estar in the UK rather than awaiting the decision of proceedings before the EPO, but now it sought to delay the UK proceedings. Finally, he identified that Regen had been prepared to launch litigation in multiple jurisdictions with little regard for costs. The relatively small cost of staying the appeal therefore carried little or no weight. The judge also rejected the argument that a stay could be based on the allegation of criminal conduct of a Regen employee in Switzerland. He therefore concluded that when deciding whether a stay should be granted, the scales came down very heavily against Regen and refused the stay. He also reached the conclusion that the request for adjournment of the appeal could not be justified, as any difficulties that Regen was suffering were of its own making. Floyd LJ then turned to consider whether the appeal should
28 CIPA JOURNAL JUNE 2020
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