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Cite as: [1999] EWHC Patents 259

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Sepracor Inc [1999] EWHC Patents 259 (29th January, 1999)

CH-1998- S No. 5110

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Before: THE HON. MR. JUSTICE LADDIE

 

B E T W E E N

SEPRACOR INC.

Plaintiff

- and -

(1) HOECHST MARION ROUSSEL LIMITED

(2) MARION MERRELL LIMITED

(3) HOECHST AG

(4) HOECHST MARION ROUSSEL AG

(5) HOECHST MARION ROUSSEL DEUTSCHLAND GMBH

(6) HOECHST MARION ROUSSEL INC.

(7) GEORGETOWN UNIVERSITY

Defendants

Mr. Richard Meade instructed by Hammond Suddards for the Plaintiff
Mr. Andrew Waugh QC instructed by Bird and Bird for the Defendants

Hearing date: 14 January, 1999

JUDGMENT

1. This is the official judgment of the court and I direct that no further note or transcript be made

 

DATED: 29 January, 1999

Mr. Justice Laddie:

1. In Fort Dodge Limited v. Akzo Nobel N.V. [1998] FSR 222, I said

"Intellectual property litigation in general and patent litigation in particular in Europe is in a state of some disarray. At the moment there appears to be, at least in some quarters, an unedifying competition to secure jurisdiction over proceedings to enforce these commercially important rights."

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

The Background

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:

(a) The first and second defendants are English companies, Hoechst Marion Roussel Limited and Marion Merrell Limited. ("D1(UK)" and"D2(UK)" respectively.)

(b) The third defendant is a German company, Hoechst AG ("D3(Germany)"). It is the strategic management company of what is called the Hoechst Group. D1(UK) and D2(UK) are two of its subsidiaries.

(c) The fourth defendant, Hoechst Marion Roussel AG ("D4(Germany)"), is also a German company. It too is one of D3(Germany)'s subsidiaries.

(d) The fifth defendant is Hoechst Marion Roussel Deutschland GmbH, ("D5(Germany)"). It is a German subsidiary of D4(Germany).

(e) The sixth defendant, Hoechst Marion Roussel Inc., ("D6(USA)") is an American subsidiary of D3(Germany).

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:

"Infringement in Denmark

36. Telfast has been offered for supply and put into circulation in Denmark by a local subsidiary of the Hoechst group, Hoechst Marion Roussel A/S, after the publication of the application for European Patent (DK) No. 0 701 443, and, in connection therewith, stocked it. The marketing authorisation for Telfast in Denmark is held by the local subsidiary of the Hoechst group in Sweden, Hoechst Marion Roussel AB.

37. Hoechst Marion Roussel A/S's dealings with Telfast in Denmark were an infringement by it of claims 1, 2, 3 and 12 of European Patent (DK) No. 0 701 443 pursuant to section 3 of the Danish Consolidated Patents Act

38. Pursuant to the general Danish law of torts, D3(Germany) and D4(Germany) by reason of their corporate relationship with Hoechst Marion Roussel A/S, and D2(UK), D5(Germany) and D6(USA), by reason of their involvement with obtaining regulatory approval for Telfast in relation to Denmark as aforesaid, are jointly or jointly and severally liable with Hoechst Marion Roussel A/S for its aforesaid acts of infringement.

39. The Telfast sold by Hoechst Marion Roussel A/S of Denmark was imported into Denmark either by D5(Germany) or by Hoechst Marion Roussel A/S pursuant to an agreement with D5(Germany).

40. The importation of Telfast into Denmark was an infringement by D5(Germany) of claims 1, 2, 3 and 12 of European Patent (DK) No. 0 701 443 pursuant to section 3 of the Danish Consolidated Patents Act, or if it was done by Hoechst Marion Roussel A/S, it was an infringement by it for which D5(Germany) is jointly and severally liable pursuant to section 3 of the Danish Consolidated Patents Act because D5(Germany) contributed to it and made it possible.

41. Further, pursuant to article 58(1) of the said Danish Consolidated Patents Act, the Plaintiff is entitled to sue D3(Germany), D4(Germany), D5(Germany), D6(USA) and D2(UK) for such acts of infringement to restrain their continuation and to recover compensation for the damage occasioned thereby, since those acts were committed intentionally."

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".

13. In any event, no responsive pleadings have been served by the defendants in the English proceedings. Instead, on 4 December 1998, two steps were taken. First D1(UK) petitioned the High Court to revoke EP (UK) 0,701,433 and served Particulars of Objections setting out the grounds on which validity is to be challenged. Secondly the present notice of motion applying to strike out the plaintiff's case was served. Among the grounds for seeking this relief advanced by the defendants is that, pursuant to the Brussels Convention it is not open to Sepracor Inc. to sue here in respect of infringement of patents in other countries when the validity of the patents are or will be in issue. There is no doubt that validity is in issue not least because Sepracor Inc. is seeking a declaration of validity in relation to each of its 13 patents referred to in its pleadings. This view of the effect of the Brussels Convention is the one which has found favour in English courts (see Fort Dodge Animal Health Limited v. Akzo [1998] FSR 222). This may appear to be inconsistent with Hoechst's attempt to litigate the validity of Sepracor Inc.'s French and German patents in Belgium. However a different view of the effect of the Brussels Convention in patent proceedings is held in the Netherlands (see Boston Scientific v. Cordis - 26 November 1998 - the Dutch Court of Appeal in the Hague). A different view is probably also held in Germany although it is not clear whether the German view is the same as the Dutch. It may be that the courts in Belgium hold a different view as well.

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.

The application before the court.

15. The defendants apply now to strike out the writ and statement of claim in their entirety on three grounds: (i) That the current proceedings will inevitably involve as a major issue the validity of 12 foreign patents. As a result of the Brussels Convention it is not open to Sepracor Inc. to have those matters litigated in the English Patents Court. (ii) In addition, the raising of the issues relating to patent infringement and validity in relation to those 12 countries may prejudice, embarrass or delay the fair trial of this action. (iii) The statement of claim and particulars of infringement disclose no arguable case of joint tortfeasance against the third to sixth defendants. How any of these grounds could have justified striking out the whole action was not explained to me. At the most they could justify striking out parts of the pleadings or removing certain defendants from the action. No reason was advanced as to why the action for infringement of the UK patent by the first two defendants should not proceed. Mr. Waugh, who appeared on behalf of the defendants, appeared to accept that. So the application proceeded on the basis that the defendants were asking for parts of the pleadings to be struck out.

(i) Brussels Convention

16. In the light of the decision in Fort Dodge, Sepracor Inc. accepts that the pleaded claims in relation to the foreign designations are not justiciable. A reference to the ECJ was ordered in Fort Dodge to resolve the issue of justiciability. Originally Sepracor Inc. offered to stay the relevant parts of these proceedings to await the outcome of that reference. That offer was not accepted by the defendants. In any event, it now appears that the reference in Fort Dodge will not proceed because that litigation is likely to come to a halt in the near future. A similar reference made in the Boston Scientific v. Cordis case also appears to have run into the sand. At the moment, therefore, there is no live reference to the ECJ on this important issue. In the light of this, Sepracor Inc. concedes, but does not formally agree, that those parts of its claim which seek to litigate the foreign designations must be struck out. It wishes to go to the Court of Appeal and ask for a reference in similar terms to that made in Fort Dodge.

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.

(ii) Striking out on the basis of prejudice, embarrassment or delay

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.

19. The nub of his complaint under O. 15 and O. 18 is that the pleas relating to foreign patents will force the parties to produce evidence of foreign law. That will add great complexity to the action and this will make the proceedings slower and more expensive than they would otherwise be. For these reasons the relevant pleadings should be struck out. A mere stay would not be enough. He said that Saccharin Corporation Ltd. v. Wild [1903] Ch 410 shows that the court has power to strike out in such circumstances. The effect of his submission is that if Sepracor Inc. has a right to bring proceedings for infringement of a foreign patent before the Patents Court by virtue of the provisions of the Brussels Convention contrary to the decision in Fort Dodge, I can prevent it from trying to enforce that right because to do so would make the action here complex.

20. I do not accept that Saccharin provides any support for the existence of such a power. There the effect of the order made by the Court of Appeal was to stay 17 out of 20 patent infringement actions for the purpose of convenient case management. It did not say that the Saccharin Corporation could be prevented from litigating them at all. It only prevented them doing so simultaneously. In any event I do not need to decide whether O. 15 r. 5(1) or O. 18 r. 19 give me the power to strike out, as opposed to stay, an arguable cause of action on the ground that it would make the resolution of another cause of action more complex or costly.

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.

(iii) Joint Tortfeasance

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:

(a) Telfast is the marketing name use by members of the Hoechst group for the drug.

(b) Telfast is made in various dosage forms.

(c) The process for making Telfast and the drug itself infringes all the same claims in all the national designations of EP 0,701,433.

(d) Regulatory approval for the marketing of Telfast in the UK was applied for and obtained by D2(UK).

(e) D2(UK) also sought recognition of such approval in other European countries. Most countries gave mutual recognition.

(f) D2(UK)'s application for regulatory approval"included essential data" from D6(USA) and from D5(Germany). Further"Each of D6(USA) and D5(Germany) were aware in providing such data that (a) it was essential to, and would be used in, D2(UK)'s application [for regulatory approval], and (b) D2(UK)'s application ... would be the basis for seeking mutual recognition in ... European countries ..."

(g) "It is the intention of D3(Germany), D4(Germany), D5(Germany) and D6(USA) that the manufacture of the [active ingredient] to be used in the formulation of Telfast should be moved to Germany, to be undertaken by D5(Germany) in a new facility in Frankfurt".

(h) "The manufacture and marketing of Telfast, and in particular the intention to move manufacture of [the active ingredient] for Telfast to Germany as aforesaid, is of very considerable importance to the Hoechst group. Sales of Telfast in 1997 were DM 385,000,000. D3(Germany) and/or D4(Germany) have been involved in the decisions of the Hoechst group to make and market Telfast in the countries to which this action relates, and have directed the relevant applications for regulatory approval, including giving directions to D6(USA), D5(Germany) and D2(UK) to co-operate to obtain such approval. Further, D3(Germany) and D4(Germany) with D5(Germany) have jointly taken the decision and made plans to begin manufacture of [the active ingredient] for use in Telfast in Germany"

(i) In relation to the organisation of the Hoechst group and its activities in relation to Telfast, reliance is also placed on the web-sites of D3(Germany) and D4(Germany)".

26. The last of these particulars refers to number of pages of publicity material made available by D3(Germany) and D4(Germany) on the Internet. No particular item of publicity material was identified to the defendants as being particularly relevant. Before me Mr. Meade, who appeared for the plaintiff, referred to passages Plaintiff's Bundle for Hearing page 34, the 8 lines of text before the box and page 42 the second and fourth full paragraphs. which (i) claim that Telfast is a very important product and (ii) report that D5(Germany) has opened its new factory in Frankfurt and has taken over supply of the active ingredient from D6(USA). None of these referred either to sales activities in England or to D1(UK) or D2(UK).

27. In relation to this issue the defendants relied on the following cases: Lumley v. Gye (1853) 2 E& B 216, Cargill v. Bower (1879) 10 Ch.D. 512 at 513, Townsend v. Haworth (1879) 48 LJ Ch. 770, The Koursk [1924] P. 140, CBS Songs Ltd. v. Amstrad Consumer Electronics plc [1988] 1 AC 1013, Unilever v. Gillette [1989] RPC 583, Unilever v. Chefaro Properties [1994] FSR 135, Mead v. Riverwood Corporation [1997] FSR 484, Credit Lyonnais v. ECGD [1998] 1 Lloyd's Rep. 19 and Napp v. Asta (23rd October 1998,. (unrep.)). Mr. Meade concentrated on Mead and the two Unilever decisions. He said that Napp was probably wrongly decided.

28. In the course of the argument on this issue, an attempt was made to compare the facts pleaded in this case with facts decided in others. It was then said that this was a stronger or weaker case. I do not think that this"me too" approach to the authorities is really useful. Each case turns on its own facts. The principles of law are set out in Credit Lyonnais and the two Unilever decisions. However I can see little point in referring to any cases other than these three Court of Appeal decisions. Looking at other authorities, particularly those at first instance, may be an internal exercise which lawyers could find useful for informing themselves and for illustrating to clients how these applications are resolved in practice. Extensive reference to them in court will normally not be productive.

29. It is possible to refer to a number of passages from the judgment of Hobhouse LJ in Credit Lyonnais to illustrate the ambit of the law of joint tortfeasance. He said:

"There is no tort of knowing assistance. As I will explain the liability in tort of a defendant for the act of another depends, in this context, upon the defendant's participation in or authorization of that act." (p. 42, left hand column)

"The overall effect of these cases is clear. It is only the conduct which comes into the first or third of the categories I have set out above [1. Inchoate offences such as conspiracy or 3. Agency] which constitute the commission of a tort. The criminal law for obvious policy reasons goes further than the civil law. Acts which knowingly facilitate the commission of a crime amount to the crime of aiding and abetting but they do not amount to a tort or make the aider liable as a joint tortfeasor." (p. 46 left hand column)

and;

"Mere assistance, even knowing assistance, does not suffice to make the"secondary" party liable as a joint tortfeasor with the primary party. What he does must go further. He must have conspired with the primary party or procured or induced his commission of the tort (my first category) or he must have joined in the common design pursuant to which the tort was committed (my third category)." (p. 46 right hand column).

30. In Unilever v. Chefaro, Glidewell LJ referred to the

" ... necessity to find that there was some"taking part" by Akzo in the common design" (p. 141)

and

"... what must be shown is a good arguable case that there are facts from which an inference could clearly and properly be drawn [of common design]" (p. 141)

He also said:

"In order to show infringement by common design, it is necessary for the plaintiff to show some act in furtherance of the common design - not merely an agreement. The issue, therefore, before the judge and this court is: does the evidence show a good arguable case that there was such a common design and/or that Akzo had procured or assisted Chefaro to infringe." (p. 138).

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:

"In broad terms, what is relied upon is the corporate connections between the Defendants, obtaining of marketing approval for Telfast and the provision of data to enable that to be done, the intention of the Hoechst group to build a new factory in Germany for the production of Telfast in and for Europe, and the strategic importance of the product for the Hoechst group." Plaintiff's Skeleton Argument para. 9.

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.

35. Having looked at the facts both separately and together, I am not persuaded that they show an arguable case that the third to sixth defendants or any of them have been engaged in a common design to infringe the UK patent. The facts pleaded give rise to an inference that the third to sixth defendants have knowingly facilitated or assisted such infringement but, in accordance with the decision in Credit Lyonnais, that is not enough. Those defendants should be removed from the action.


© 1999 Crown Copyright


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