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(1) Illumina, Inc. & (2) Sequenom, Inc v (1) Premaitha Health plc & (2) Premaitha Limited; (1) TDL Genetics Ltd, (2) The Doctors Laboratory Ltd & (3) Ariosa Diagnostics, Inc. (19 March 2018, Patents Court, UK, Case Nos. HP-2017-000054 and HP-2017-000075)

The UK Patents Court refused to strike out two patent infringement actions concerning a new patent (EP ‘321) and the same non-invasive prenatal tests (IONA and Harmony) that had already been the subject of previous patent infringement actions.

In refusing, Carr J considered the authorities relating to what constitutes an abuse of process – the question isn’t merely whether the party could have raised the claim previously; the circumstances within which the claim is raised are important. There was no suggestion that the claimants had kept the infringement claim secret during the earlier litigation or that they were attempting to re-litigate previously-decided issues. They had simply not appreciated that a new cause of action existed in respect of EP ‘321. Therefore, they should not be denied their right to a trial. Various prejudicial points were raised by the defendants (prolonged commercial uncertainty, disruption to business continuity, increased litigation costs and allocation of resources) but these were not relevant considerations when deciding the issue of abuse of process.

Separate summary judgment applications, made by the defendants against one of the claimants (Illumina), were successful. It had already been decided that an agreement (the “PPA”) did not operate to make Illumina an exclusive licensee of a patent in one of the previous actions. In the present case, Illumina was again relying on the same operation of the PPA to assert an exclusive licence in respect of EP ‘321 so issue estoppel was found. It did not matter that the previous finding was currently the subject of an appeal.

A copy of the judgment (in English) can be found here.

Headnote: John de Rohan-Truba, Marks & Clerk Solicitors LLP