Applications to appeal patent rulings should no longer be given easy passage

Court of Appeal: time to change practice

The principle outlined in the White Book that the Court of Appeal should more readily grant permission to appeal in patent cases no longer holds good, it ruled last week.

Lord Justice Floyd said the principle was derived from Pozzoli SPA v BDMO SA [2007] EWCA Civ 588, in which Jacob LJ said: “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.

“For, unlike the trial judge, the Court of Appeal judge(s) who have to decide whether permission should be granted (where the trial judge has refused it) will not be immersed in the technology and evidence in the same way as the trial judge.

“Faced with but an incomplete understanding and a plausible skeleton argument seeking permission, the Court of Appeal will generally be likely to grant permission, even if it later discerns that the case is indeed clear.”

Ruling in In Teva UK Ltd v Boehringer Ingelheim Pharma GmbH & Co KG [2016] EWCA Civ 1296, Floyd LJ observed that the passage in the White Book dealing with patent appeals “follows hard on the heels of a section entitled ‘Permission will be granted more sparingly for appeals on questions of fact from the Technology and Construction Court’”.

This cited Skanska Construction UK Ltd v Egger (Barony) Ltd [2002] EWCA Civ 1914, which highlighted the specialist nature and factual minutiae of such cases.

Floyd LJ said: “Broadly speaking, everything which is said there about the TCC could be said about appeals on factual findings from the Patents Court.”

The White Book recognised this, but said that in relation to patent cases, “this approach has been authoritatively laid down and its rationale explained”.

But Floyd LJ said: “We were informed by both counsel that, whilst it has never been disapproved, the practice suggested in Pozzoli is not in fact applied by first instance patent judges. My experience as a first instance judge was the same.”

He added that the rules have moved on since Pozzoli – since October 2016, the Court of Appeal determines applications for permission to appeal on paper unless the judge considering it directs an oral hearing. He can also identify any issues the parties should focus on at the hearing.

“Accordingly the court is now placed in a good position to obtain the assistance of the parties. Under these rules, 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. It would not be fair to do so. The procedural background is therefore different to that which faced this court in Pozzoli.

“I think the time has come to say 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.

“For that reason, there is no justification, in granting or refusing permission to appeal, for treating patent cases any differently to any other cases. In my judgment, the approach in Pozzoli should no longer be followed.

“Nevertheless, Jacob LJ was right that the trial judge, immersed in the technology as he will be, is in a good position to understand whether the case does raise an arguable point for an appeal. This court will always be assisted, therefore, if the judge takes the time to give full reasons for refusing permission, as Morgan J did in this case.”

The court decided not to grant permission to appeal.

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