Court of Appeal upholds first instance decision on the facts – an example of how the appeal system is being clogged up?
On 27 July, the Court of Appeal handed down its judgment in Hospira v Genentech, an appeal from the decision of Birss J dated 21 November 2014 concerning the revocation of two patents covering pharmaceutical formulations of Herceptin. At first instance, the judge had held both patents invalid on the grounds of lack of inventive step and added matter.
Floyd LJ gave the leading judgment and provided a summary of the law of obviousness. Citing Kitchin J (as he then was) in Generics v Lundbeck, he referred to the fact that the assessment of obviousness is multifactorial: “The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success.”
As well as referring to other aspects of the law of obviousness, Lord Justice Floyd also reaffirmed the well-known approach of the appellate courts concerning appeals on the facts and that a first instance decision is not open to an independent evaluation by the Court of Appeal unless the judge has made an error of principle.
Having considered the findings of Birss J, as well as the submissions from each side, Floyd LJ held that he did not believe the judge had fallen into any error of principle which would justify the Court of Appeal undertaking its own evaluation. As the Judges found the patents invalid for lack of inventive step, they did not consider the further issue of added matter.
There is nothing particularly enlightening about this decision except to confirm the reluctance by the appeal courts to reverse a decision from the first instance judge based on findings of fact with are discretionary in nature. Given the current backlog in the Court of Appeal with appeals often taking well over a year to be listed, one could query whether this sort of case should have been given permission to appeal in the first place.
Indeed in May this year, the Civil Procedure Rule Committee (CPRC) invited written responses on proposed amendments to the Civil Procedure Rules to alleviate pressure on the Court of Appeal by:
(a) increasing the threshold for permission to appeal to the Court of Appeal;
(b) removing the automatic right of oral renewal for application for permission to appeal and other applications in the course of proceedings, to be replaced by judicial discretion for the court to decide whether to hold a hearing;
(c) simplifying the supporting practice direction making it more user-friendly and to limit the volume of documents presented to the Court of Appeal.
These proposals have to be balanced with access to justice such that it will be interesting to see the outcome of the consultation when it is published in the next few months.