England and Wales High Court (Patents Court) Decisions

Mr. Justice Laddie:

2. The pharmaceutical patents dispute of which the present proceedings are but a part confirm and reinforce that view.

2. The UK patent in suit in this action concerns an antihistamine drug known as terfenadine carboxylate. The first to sixth defendants, all of which are companies within the Hoechst group, make or deal with a product which is said to infringe the patent or its foreign equivalents. It is marketed by various Hoechst companies in various countries under the trade mark Telfast or Allegra. The plaintiff, Sepracor Inc., is the co-proprietor of the UK patent. The other co-proprietor is Georgetown University. It has been joined as a formality as the seventh defendant.

3. The present application has been brought by the defendants to strike out the action. Before turning to the details of the pleadings and of the defendants' objection to them, it may be useful to give an overview of the international dispute which has arisen between the parties. Insofar as this refers to matters not set out in the pleadings themselves, it is based on information contained in an affidavit sworn by the defendants' solicitor, Mr. Trevor Cook, one sworn by the plaintiff's solicitor Mr. Laurence Cohen and affidavits from a number of foreign lawyers.

4. It is convenient to start by identifying the active defendants in this action. They are as follows:

3. The Hoechst Group is a large chemicals and pharmaceuticals group based in Germany. According to Mr. Cohen it is well known that Hoechst's headquarters and main factory site are in Germany.

5. Currently, D6(USA) makes bulk terfenadine carboxylate in the United States of America. It is sent to Germany where it is formulated into Telfast by D5(Germany). Telfast is then sent to, inter alia, the United Kingdom. It is not disputed for the purpose of this application that D1(UK) and D2(UK) are responsible for marketing it here and that if the UK patent is valid and infringed by the sale of that product, they are liable. No complaint would have been raised if Sepracor Inc. had commenced proceedings here limited to seeking relief against them for infringement of that patent by activities carried on in the United Kingdom. The current proceedings are not so limited.

6. Sepracor Inc. applied for patent protection under the European Patent Convention ("EPC") through the European Patent Office ("EPO") in Munich. It designated not only the United Kingdom but also 16 other countries (Austria, Belgium, Denmark, France, Germany, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Spain, Sweden, and Switzerland). The effect of the grant of the patent, EP 0,701,433, in the EPO was to create a bundle of 17 national patents which are to all intents and purposes identical. One of the purposes of the EPC is to harmonise the law of patent validity and infringement in all the States which have adhered to the Convention. So, subject to minor variations, the laws of infringement and validity in each of the 17 countries for which EP 0,701,433 has been designated should be the same.

7. On 4 May 1998, D5(Germany) and a Belgian company within the Hoechst group commenced proceedings in Belgium against Sepracor Inc and Georgetown University seeking declarations that the national designations of the patent in Belgium and Germany were invalid or not infringed. The plaintiffs say that this was done so as to tie litigation relating to possible infringement in Germany to the timetable for patent infringement actions in Belgium. I have been supplied with evidence, which has not been challenged, that a patent infringement action in Belgium would be expected to take some 5 years to come to trial and that any appeal would take another 5 years. Amongst patent practitioners, forum shopping of this type is called"deploying the Belgian torpedo". An alternative, much discussed in intellectual property law journals, is the"Italian torpedo". The torpedo is a means for preventing a patentee from obtaining effective relief by starting litigation in a Brussels Convention country which is believed or hoped to have slow court procedures.

8. It appears that in November of last year, an application was launched by Hoechst to extend the Belgian proceedings to cover France. An application is also on foot to add D3(Germany) and D4(Germany) to those proceedings as interveners.

9. On 5 May 1998, D6(USA) filed an Opposition to EP 0,701,433 in the EPO. The validity of the patent was attacked on various grounds. According to evidence put before me, under German procedural law, the existence of an opposition before the EPO can be a ground for staying infringement proceedings in that country in some circumstances. Therefore there is at least a possibility that any proceedings brought by Sepracor Inc. against any company within the Hoechst group in Germany would be stayed.

10. On 28 September, 1998, the present proceedings in England were commenced. In it, Sepracor Inc. seeks a declaration that the patent in suit and the equivalent designations in each of 12 other countries (Austria, Denmark, France, Germany, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden, and Switzerland) are valid. It also seeks relief against all 6 defendants both for infringements of the UK patent and of the identical patents in all those 12 countries. Although the writ had been served on all the defendants by 7 October, no Statement of Claim or Particulars of Infringement were served with it. After two time summons had been taken out, the latter pleadings were served on the defendants on 23 November.

11. It will be necessary to consider Sepracor Inc.'s pleadings below. However the flavour of some of the issues sought to be raised here in respect of activities in the 12 foreign countries can be illustrated by reference to the allegations made in relation to Denmark:

12. It should be noted that the Danish company which markets Telfast in Denmark, Hoechst Marion Roussel A/S, is not a party to the English proceedings. Neither is the local Danish company which holds the marketing authorisation for that country, Hoechst Marion Roussel AB. Similarly in relation to all the other foreign countries sought to be brought in by the Particulars of Infringement, the local companies which are responsible for local sales have not been joined. Secondly it should be noted that in relation to Denmark of the English defendants only D2(UK) is alleged to be liable for infringement. In relation to Austria, Switzerland and Spain, neither English company is alleged to be liable for infringement. Why Sepracor Inc. decided to bring all the foreign patents and activities into the English proceedings was not explained. Since it immediately offered to stay all of the proceedings here save in respect of the UK patent, at first sight joining all the foreign issues appears unnecessary. It may be that it was done as a pre-emptive move to prevent any company within the Hoechst group from seeking declaratory relief in a country which might be thought of as being particularly"pro-infringer".

14. Based on the information before me, it is reasonable to assume that there would never have been any proceedings in Belgium had there not been a desire to frustrate proceedings in Germany. The source of all the Hoechst drugs to be sold in Europe is likely to be the Hoechst plant in the latter country. A sensible man, uncontaminated by familiarity with the Brussels Convention, and faced with the necessity to litigate in a national court, would be forgiven for thinking that the obvious ways of resolving the issues without unnecessary duplication of proceedings would be to litigate validity and infringement in Germany. But that is the course that both sides wish to avoid. Hoechst wants the German issues to be decided in Belgium and Sepracor wants them resolved in England. Similarly, although France is not the source of the drug and is not said to be a hub for its distribution, Hoechst wants the French issues decided in Belgium and Sepracor Inc. wants them resolved in England. In addition, in relation to all countries except England, Sepracor Inc. wants to restrain local infringement without bringing proceedings against the local companies which are primarily responsible for the allegedly infringing activities. Furthermore it may well be that issues such as the law of patent infringement and validity in most of the foreign countries referred to in the writ and statement of claim and the law of joint tortfeasance in each of them would never have arisen at all (and certainly not for determination in England), had sensible procedures for investigating the validity and infringement of patents obtained under the EPC been in place. As it is there is a positive incentive to commence proceedings in countries where they are not likely to come to a hearing within a reasonable period of time or in countries which have no real relationship to the acts of infringement alleged or, as here, in both. A less sensible system could not have been dreamt up by Kafka. It does not meet the legitimate needs of patent holders and potential infringers within EPC countries and simply proliferates pre-emptive litigation. The fact that there is a difference of opinion between the courts in various countries as to the effect of the Brussels Convention has not caused the problem, but it has exacerbated it. The sooner that difference is resolved by the ECJ the better.

17. In the circumstances I shall order all those parts of the writ, statement of claim and particulars of infringement which seek to litigate the foreign designations of the patent to be struck out.

18. Mr. Waugh also invites me to strike out those parts of the writ and pleadings which are concerned with the foreign designations either under O. 15 r. 5(1) or under O. 18 r. 19. He says that under each of these I have power to strike out parts of a claim which may prejudice embarrass or delay the trial of the purely domestic issues. In the light of Sepracor Inc.'s concession relating to the Brussels Convention, it might be thought that there is no point in considering whether the same pleas could be struck out under these rules. But Mr. Waugh says that there is. His clients do not want a reference to be made to the ECJ. His submission is that if I strike out the foreign issues because they will embarrass or delay the trial of the domestic issues, then I should not give leave to appeal and the Court of Appeal will not grant leave either because such a strike out would be an exercise of my discretion.

21. Even if such a power exists, I would decline to exercise it so as to strike out the foreign claims. No doubt it is convenient and generally speaking desirable that, say, the law of Denmark should be considered and applied by Danish courts. For that purpose the foreign court would be the forum conveniens. But the courts here frequently have to determine issues of foreign law. The choice would appear to be between one action here with evidence relating to the law in 12 countries or separate actions in each of thirteen countries (assuming, of course, that under the Brussels Convention each and all of the foreign courts would be permitted to accept jurisdiction). If the former course is taken, although there may be separate issues relating to the law of joint tortfeasance in each country, it is likely that the law of infringement and validity will be in nearly all respects identical since each country has tried to implement the provisions of the EPC. On the other hand if the latter course is taken, in each of thirteen countries the national courts will be asked to determine the same issues of infringement and validity. This will involve preparing and producing evidence in each countries and 26 teams of lawyers will have to be instructed.

22. I have no doubt that one action would be quicker, cheaper and more convenient. It will reduce the possibility of conflicting decisions on the same EPC issues. In addition the Convention is designed to produce a uniform international code in accordance with which litigation is directed to specified national courts. It is well known and established that considerations of forum conveniens is not a relevant consideration under the Convention. I can think of no circumstances which would justify me exercising any discretion I may have so as to make an order which prevents a party from litigating in a court in which, in accordance with the provisions of the Convention, he is entitled to sue.

23. In the circumstances I do not need to consider whether Mr. Waugh's stratagem would have kept this case away from the Court of Appeal as his clients want.

24. Quite independently of the other attacks made on Sepracor Inc.'s pleadings, the defendants argue that no arguable plea of joint tortfeasance has been made against the third to sixth defendants in relation to the actions of D1(UK) and D2(UK) in England.

25. The particulars on which Sepracor Inc. relies in support of its plea of joint tortfeasance are contained in paragraphs 1 to 17 of the particulars of infringement. The first five of these only set out which defendants are subsidiaries of which other subsidiaries. The allegations contained in the remaining 12 paragraphs of particulars are as follows:

31. Applying those principles to the facts pleaded here and referred to above, I do not accept that an arguable case of joint tortfeasance by the third to sixth defendants in relation to the activities of D1(UK) and D2(UK) in England has been demonstrated. I accept Mr. Meade's summary of what his pleading put forward as the case for joint tortfeasance:

4. In considering that summary, it should be remembered that Sepracor Inc. has alleged the D2(UK) alone applied for marketing approval for Telfast in England.

32. Mr. Waugh accepted this summary as accurate but he also analysed each paragraph of the Particulars of Infringement. Mr. Meade criticized him for doing so. He said that an individual fact taken by itself may not demonstrate joint torteasance but it was necessary to look at the whole picture. He said this a case where the total picture is greater than the sum of its parts. Furthermore he said that I should bear in mind that the plaintiff had no direct knowledge of the precise details of what went on inside the Hoechst group.

33. The latter point has strength to this extent that the court is entitled to draw reasonable inferences from the facts pleaded. But it does not mean that where there are insufficient facts to support an inference of joint tortfeasance the plea should be allowed to remain in the hope that something will turn up later. Foreign defendants are not to be assumed to be joint tortfeasors unless they prove otherwise.

34. I also accept Mr. Meade's point that the overall effect of all the pleaded facts must be assessed. An individual fact may not be sufficient by itself. It may suggest a number of possible relationships between the defendants. Taken with other facts, one possible relationship, that is to say joint tortfeasance, may look more likely or arguable than others. But that does not justify the criticism levelled at Mr. Waugh. It is legitimate to examine each of the facts pleaded not just to see how strongly it reinforces an overall picture of joint tortfeasance but also to see whether it throws any light at all on that issue. A fact which is irrelevant does not contribute to the picture.