ON APPEAL FROM CHANCERY DIVISION
Mr Justice Arnold
Strand, London, WC2A 2LL
B e f o r e :
LADY JUSTICE HALLETT
LADY JUSTICE SHARP
| Resolution Chemicals Limited
|- and -
|H Lundbeck A/S
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Hugh Tomlinson QC (instructed by Olswang LLP) for the Claimant/Respondent
Crown Copyright ©
The Chancellor Sir Terence Etherton :
The attack on the Patent
The procedural background
"30. The trial of this action shall be listed on an expedited basis before Mr Justice Arnold if available on the earliest possible date after 11 November 2013, with a time estimate of 8 days and pre-reading estimate of 2 days with a technical complexity rating of 4".
The Recusal Application
The Hearing of the Recusal Application
"22. Where a judge is faced with an application that he should recuse himself on the ground of apparent [bias] it is in my judgment incumbent on him to explain in sufficient detail the scale and content of the professional or other relationship which is challenged on the application. The parties are not in the position of being able to cross-examine the judge about it and he is likely to be the only source of the relevant information. Without this, it becomes difficult if not impossible properly to apply the informed bystander test set out by Lord Hope in his speech in Helow v Home Secretary  1 WLR 2416."
"23. It is difficult accurately to remember the events of more than 30 years ago, and my recollection has already been proved inaccurate in one respect. With the assistance of the evidence filed by the parties, however, I have done my best to recall the nature and extent of my contact with Professor Jack Baldwin FRS (he was knighted subsequently) when I was a student.
24. I studied Natural Sciences (Chemistry) at Magdalen College, Oxford from 1979 to 1983. At that time, Prof Baldwin was the Waynflete Professor of Chemistry, a professorship endowed by Magdalen. I had no contact with Prof Baldwin through the college, since he did not teach there. My first and only contact with Prof Baldwin during Part I of the degree (the first three years) was when I attended a course of lectures on synthetic organic chemistry which he gave in the third year. As I recall it, the main focus of the lectures was upon "retrosynthetic analysis", that is to say, analysing routes of synthesis by working backwards from the target compound. I found the content of the lectures interesting even though they were poorly delivered, and therefore asked Prof Baldwin to be my Part II supervisor (to the amusement of several of my contempories).
25. The research project to which Prof Baldwin assigned me was a project to synthesise a cyclopentanoid isonitrile called '270' which was a metabolite of Trichoderma fungi. This was a project on which two post-doctoral workers in Prof Baldwin's research group, Dr David Kelly and Dr Carl Ziegler, were already engaged. It was a challenging project because of the presence of the sensitive isonitrile group in the target compound. As I recall it, Dr Kelly was pursing one main route to the synthesis, while Dr Ziegler was pursing another. Prof Baldwin assigned me to explore some variants of the route Dr Ziegler was pursuing.
26. My research was undertaken during the period from early October 1982 to early May 1983. At that time, Prof Baldwin had a large research group. My recollection is that, including two other Part II students and myself, there were between 45 and 50 people in the group that year. There were periodic meetings of the whole group to discuss current research, but I do not recollect my research being discussed in that forum. My recollection is that I saw Prof Baldwin about once every four weeks for about half an hour. I think that Dr Ziegler was also present at most of these meetings. During the meetings, I updated Prof Baldwin on what I had done since our last meeting, and he gave me ideas for what to do next. On a day-to-day basis, I was supervised by Dr Ziegler and to a lesser extent by Dr Kelly. This recollection is supported by the fact that, in the acknowledgements to my thesis, I thanked Prof Baldwin for "his stimulating supervision" and Drs Ziegler and Kelly for "endless advice". (I note with sadness that I have discovered from the internet that both Dr Ziegler and Dr Kelly have since passed away, Dr Kelly in 2008 and Dr Ziegler in 2012.)
27. My abiding recollection of that period was that I found it quite demoralising. I did not find the laboratory environment congenial and I was frustrated by the fact that most of my experiments failed. By contrast, I found writing my thesis, which I presented in June 1983, more enjoyable. I have no recollection of asking for Prof Baldwin's comments on a draft of my thesis, or even Dr Ziegler's, but I think that I must have asked for Dr Ziegler's comments.
28. One of the ideas which Prof Baldwin suggested at one point was to try to make an intermediate with a chloro--cumulene group by a particular method. This was one of the few experiments I undertook which was successful. After I had demonstrated the principle, Dr Ziegler did a series of further experiments to explore the utility of the method. This work was subsequently published as a short paper, "A facile preparation of chloro--cumulenes", J. Chem. Soc., Chem. Comm., 152-153, 1984. Although the named authors of the paper were myself, Prof Baldwin and Dr Ziegler, so far as I recall, I was not involved in writing or submitting the paper, which I note was received by the journal on 3 November 1983. I presume it was written by Dr Ziegler.
29. My last contact with Prof Baldwin while at Oxford was a short interview to mark the conclusion of my Part II work at around the time I presented my thesis. Prof Baldwin offered me a place as a DPhil student despite the fact that I was predicted to receive (and did receive) a Second Class degree, but I declined this offer. After leaving Oxford in June 1983, I pursued a career in the law.
30. While I was at Oxford, I also attended a course of lectures given by the then Dr Steve Davies, later Prof Baldwin's successor as Waynflete Professor. My recollection is not very clear, but I think that this was in my first year and that the lectures were relatively introductory lectures in organic chemistry. I also believe that at some point during the four years I had some contact with Dr Davies outside the context of those lectures, When the present application was first intimated in mid September, I thought Dr Davies must also have been a member of Prof Baldwin's research group at the time. This has since been corrected by Prof Davies, and I now realise that it could not have been the case. I am unable now to recollect in what context I had contact with Dr Davies (if indeed this memory is accurate at all).
31. It has recently occurred to me that I may have met Prof Baldwin once since leaving Oxford. In September 2005 Magdalen College held a dinner for alumni chemists to celebrate the retirement of Prof Baldwin and of two of the college tutors who had taught me during Part I. I attended the dinner. I am not sure whether I spoke to Prof Baldwin on that occasion, but if I did, it was only briefly during pre-dinner drinks.
32. I am aware that Prof Baldwin has given expert evidence in at least two cases in the Patents Court (Monsanto Co v Merck & Co Inc  RPC 709 and SmithKline Beecham plc's Patent (No 2)  EWHC 2573 (Pat),  RPC 33), but I was not involved in those cases in any capacity. "
The Judgment of Arnold J
"MR JUSTICE ARNOLD: It is a more particularised way of putting what one might label the mentor point because going back to what I was saying earlier, the Baldwin rules are about stereoselectivity in SN2 reactions and one of the key areas of differences in the case is whether – I do not think it is in dispute that the skilled person in the art would have been aware of the Baldwin rules in 1988. They were famous. Everybody knew about them. But the question is, what the notional person skilled in the art, armed with the Baldwin rules and the problem at hand would conclude."
"86. While I believe that the average skilled person would know that stereoelectronics mattered in this reaction …, in the context of an experimental project, such as the synthesis of the enantiomers of citalopram, the average skilled person is unlikely to have spent time considering this. Baldwin's Rules and the papers from which they derive are not the sort of information that the average person skilled in 1988 would have in their head – they would not have a recollection of the individual rules themselves, nor would they have thought them worthwhile to review in the context of such a project. In practice, the way the skilled person would work would be to look for analogous reactions reported in the literature and, for reasons set out below in paragraphs 98 to 103 in the Annex to this report, they would find none.
87. In any event, had the skilled person considered them in the context of the project in hand, they would see that Baldwin's Rules do not even apply to this ring closure. The ring closure in the diol system involves an SN2 nucleophilic substitution reaction at a tetrahedral carbon atom. Only Baldwin's Rule 1 addresses tetrahedral systems, and is therefore the only one of the rules that could apply to SN2 nucleophilic substitution reactions. Baldwin's Rule 1 is clearly intended to apply to saturated systems and not unsaturated systems. If the skilled person was aware of Baldwin's paper, they would know this and not take anything of use to this system from them."
"Finally, the existence of what had become known as Baldwin's rules were well known to organic chemists in 1988. How the skilled person would apply those rules was, however, hotly disputed."
That seems to me to be no different from what the Judge said on 15 October 2013. I do not regard the word "famous" as being anything other than an appropriate substitute for "well-known". Nor do I agree that the words "armed with Baldwin's Rules" shows a subconscious disposition to give an answer to the question proposed by the Judge favourable to Resolution. It is relevant to note that at  of his judgment the Judge emphasises that the question for the court to assess "will be the extent to which Prof Baldwin's opinions reflect the common general knowledge and the perceptions of the notional skilled person, not whether they are genuinely held or even scientifically correct". In the course of his oral submissions Mr Gordon confirmed that was indeed a correct statement of the relevance of Professor Baldwin's evidence. All this is consistent with there having been no immediate reaction by Lundbeck's counsel to what the Judge said on 15 October 2013.
Lady Justice Hallett
Lady Justice Sharp