UK: How To Shoot For Arrow Relief

The Court of Appeal has ruled that the discretion as to whether or not to award Arrow relief lies with the trial judge, for exercise in light of the facts and circumstances at the date of the trial.

In an application to strike out such a claim (i.e. before the trial has been reached), the task for the court is merely to determine whether the pleaded facts and arguments give rise to a realistic claim which should go to trial. At such a preliminary stage it is not appropriate for the court to determine whether the facts relied upon are sufficiently "unusual" to justify Arrow relief.

The Court of Appeal's judgment in Glaxo Group Limited & Ors v Vectura Limited [2018] EWCA Civ (28 June 2018), overturning HHJ Hacon's first instance judgment, is now available to read.

What is Arrow relief?

An Arrow declaration is, in effect, a declaration that a party has a Gillette defence, as of a particular date, against allegations of infringement of patents of later date. The Arrow name derives from the case of Arrow v Merck [2007] EWHC 1900 (Pat), in which the relief was first considered by the court.

The Gillette defence is a long-standing feature of English patent law, the name of which can be traced to the speech of Lord Moulton in Gillette Safety Razor Co v Anglo-American Trading Co Ltd (1913) 30 RPC 465. In a Gillette defence a defendant contends that his (allegedly infringing) product or process was obvious at a particular date and accordingly cannot fall within a valid claim of a later patent.

What are the conditions for obtaining Arrow relief?

The first award of Arrow relief was by the Patents Court (Henry Carr J) in Fujifilm Kyowa Kirin Biologics v AbbVie Biotechnology [2017] EWHC 395 (Pat), after the Court of Appeal paved the way for the award of such relief in appropriate cases in its interim judgment in the same case ([2017] EWCA Civ 1).

In the Fujifilm case, the Court of Appeal concluded that ([98]):

"i) A declaration that a product, process or use was old or obvious at a particular date does not necessarily offend against section 74 of the Patents Act.

ii) Such a declaration may offend against the Act where it is a disguised attack on the validity of a granted patent.

iii) Such declarations do not offend against the scheme of the European Patent Convention or the Patents Act simply because the declaration is sought against the background of pending divisional applications by the counter-party.

iv) On the other hand the existence of pending applications cannot itself be a sufficient justification for granting a declaration.

v) Whether such a declaration is justified depends on whether a sufficient case can be made for the exercise of the court's discretion in accordance with established principles."

In the Glaxo case, the Court of Appeal (Floyd LJ) noted that the statutory remedies of revocation and declaration of non-infringement may be obtained by any party in respect of a defendant's granted patent if the statutory tests are satisfied. (A declaration of non-infringement may of course be sought on the basis of a Gillette defence). In contrast, the award of Arrow relief, which is geared at providing the claimant with a shield against not-yet-granted patents, entails the exercise of the court's discretion. So what did paragraphs 98(iv) and 98(v) of the Court of Appeal's judgment in Fujifilm require?

HHJ Hacon had held at first instance that further to paragraph 98(iv) of Fujifilm: "it was necessary for "something more" than the existence of pending patent applications to be identified before the court could go on to exercise its discretion to grant relief". Glaxo had not shown "something more", so the claim was struck out.

In overturning HHJ Hacon, Floyd LJ said that 98(iv) and (v) must be read together. He reiterated that the identification of a relevant patent application is not "sufficient" for the award of such relief, but that it is necessary to go further and to examine whether Arrow relief would serve a "useful purpose" (per the "established principles" referred to in paragraph 98(v)). However, it is the facts and circumstances at the date of the trial which will ultimately be determinative of whether the discretion should be exercised. It was not "sensible to ask, at this stage [i.e. at a strike-out], whether the facts relied on are sufficiently "unusual" to justify Arrow relief. This would be a particularly difficult test to apply at this interim stage before any facts are found".

What is required in order to commence a claim and defeat any strike out application?

Floyd LJ ruled that provided "the pleaded facts and arguments give rise to a realistic claim for Arrow relief", it passes the "strike-out" threshold and the claim should be permitted to proceed to trial. "The discretion to grant Arrow relief is that of the trial judge, not that of the judge hearing the strike out application".

In accordance with the usual procedural principles, when considering Vectura's application to strike out Glaxo's claim for Arrow relief, the assumed facts could be taken from Glaxo's pleading and arguments before the court.

On the basis of Glaxo's pleaded case, it did have a realistic claim.

What were the pleaded facts and arguments that meant GlaxoSmithKline's claim was realistic?

Glaxo contended that Vectura had pursued a strategy of filing multiple patent applications to create a thicket of patents in relation to the use of magnesium stearate for formulations for dry powder inhalers. This was a strategy that had been pursued over many years and was continuing. The claim language had been formulated and re-formulated to describe in various ways what was essentially a single inventive concept. This was creating commercial uncertainty for Glaxo. Vectura had also taken the trouble to specify the active ingredients in Glaxo's Elipta products, which could be seen as an attempt to target Glaxo specifically. In the circumstances, Glaxo's contention was that the Arrow declaration sought would provide it with valuable commercial certainty - and therefore its grant would serve a "useful purpose".

"Clarity" of the declaration sought?

Vectura's Respondent's Notice raised the argument that the wording of the declaration being sought by Glaxo was not clear. Glaxo's declaration focussed on three features of its industrial process (in summary (i) pre-blending; (ii) de-lumping, and (iii) further blending) but with reference to a more detailed Product and Process Description ("PPD").

Floyd LJ confirmed that "there is no dispute that the declaration must be formulated with clarity", not just because the Court needs to know what the technical issues it has to decide are, but also because the facts ultimately declared by the Court must be clear.

In relation to Glaxo's drafted declaration in its prayer for relief, Floyd LJ said: "I do not accept that it is clear at this stage that either the general declaration [focussing on the three features] or the PPD declaration [including the full detail of the PPD] is so unclear that it could not be granted. In each case Glaxo would have to establish that the relevant features were old or obvious at the level of generality at which they are pitched."

It appears therefore that the precise terms of any "Arrow declaration" sought would be the subject of some degree of "negotiation" during the course of the trial procedure. This is similar to what happened in both the Arrow and Fujifilm cases (in which the precise wording of the declaration sought developed during the respective case).

Thus it appears that as long as a "realistic claim" for a declaration in the terms sought at the early stage of an action can be raised, it should be something that will survive a strike-out, and proceed to be determined on the facts at the trial.

What next for the Glaxo v Vectura dispute?

Glaxo's claim for Arrow relief will now proceed to trial along with its claims for (i) declarations of non-infringement and (ii) invalidity and revocation in respect of five granted patents. In the context of the declarations of non-infringement, the first instance judge's broad strike out, which had encompassed Glaxo's Gillette arguments in respect of the granted patents, had been wrong also.

Gowling WLG acted for GlaxoSmithKline.

Read the original article on GowlingWLG.com

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions