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UK – Teva UK v. Boehringer Ingelheim Pharma

28 Dec 2016

Teva UK Limited v Boehringer Ingelheim Pharma GmbH & Co KG, UK, Court of Appeal, Kitchin LJ and Floyd LJ, 16 December 2016

These proceedings concerned an application on behalf of Boehringer Ingelheim Pharma GmbH & Co (Boehringer) seeking permission of the Court of Appeal to appeal a decision by Morgan J to revoke Patent (UK) 1 379 220 (the “Patent”) on the grounds that the Patent lacked an inventive step.

Floyd LJ reviewed the relevant authorities and revised the previous standard required for permission to appeal in patent cases. In Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, the Court of Appeal had held that, unless the case was very clear and could be understood sufficiently readily in an hour or so, the better course was for the trial judge to grant permission to appeal. The reasoning behind this approach was that, unlike the trial judge, the Court of Appeal judge(s) would not have been immersed in the technical background and expertise. An incomplete understanding, coupled with a plausible skeleton argument, might make the appeal judge(s) more ready to grant permission to appeal where the judge had refused it.

In the present case, the Patent was concerned with a capsule made of a certain moisture content to be used in a dry powder inhaler for delivery of the powdered active ingredient. Boehringer submitted that Morgan J had wrongly interpreted the evidence of the formulation expert and wrongly dismissed the moisture level as arbitrary. However, Floyd LJ could see no basis for interfering with the judge’s findings of fact and held that the technical complexity of the background of a case was not a factor which trial judges should take into account in favour of granting permission to appeal. For that reason, there was no justification for treating patent cases any differently (in terms of the permission to appeal application) when appealing findings of fact. All decisions on permission to appeal should be based on the criteria in the CPR, namely whether the appeal has a real prospect of success. Hence the approach in Pozzoli to the extent that it suggested that a more relaxed the standard for obtaining permission to apply applied in patent cases should no longer be followed.

The judgment can be found here.

Headnote: Nicholas Fox, Simmons & Simmons LLP