Pfizer Ireland Pharmaceuticals & Anor v Eli Lilly & Anor

Court of Appeal, CA 5/05, 8 December 2005

This case concerned the nature of pleadings in patent revocation proceedings. Under the High Court Rules a party seeking revocation must file Particulars of Objection as to the validity of the challenged patent (R725ZH). The Rules require identification of every ground on which the validity of the patent is disputed. At the same time the Rules contain no explicit requirement for the patentee to respond to the Particulars of Objection. The absence of such a requirement is a feature of comparable rules in the UK and Australia.

At first instance in two separate decisions and in reliance on an earlier Court of Appeal decision (Ancare v Ciba Geigy), Potter J had required Pfizer, as patentee, to respond to Lilly’s Particulars of Objection as if it were providing a statement of defence under R130. Pfizer objected to having to provide a statement of defence since the Particulars of Objection are not pleadings of material fact but statements of contention and argument. Pfizer had however provided some denials.

The Court of Appeal in a Bench of five overruled its earlier Ancare decision and held that R130 did not apply so as to require effectively a statement of defence to the Particulars of Objection. The court therefore noted that, in applying Ancare, the judge had proceeded on a view of the law which it was now finding was not correct. However, the court went on to note that the English courts have on several occasions ordered particulars from patentees. It noted too that there had in the last 15 years been major developments in case management and that RR437 and 425 (as amended) would have permitted Potter J to give directions along the lines of the orders made in her judgment.

In the exercise of its discretion and, given procedural issues as to the way Pfizer’s appeals had been brought, the court decided not to allow Pfizer’s appeals - particularly as Potter J could have achieved the same outcome by using case management rules. However, at the same time, the court dismissed Lilly’s cross-appeal seeking yet further answers to its Particulars of Objection. The court held that the first instance judge “in reliance on Ancare, set out on a false trail and we are not prepared to go any further along it”. If Pfizer was to be ordered to provide the particulars in issue, this would have to be way of properly considered case management directions.

Comment:  

This decision clearly shows that an answer to Particulars of Objection in the form of a fully particularised “statement of defence” under R130 cannot be ordered. However, it may be that, in appropriate cases, the revoking party can seek some case management directions requiring the patentee to provide a statement of issues and contentions so as to define the issues. It is also clear on authority that a patentee cannot be required to construe or provide a construction of its patent. That is a matter for argument at trial.

This whole issue may require further clarification by the Rules Committee in light of the court’s comments.