Going out with a Bang, what a difference 2 days makes: Neurim v Mylan

Judgments of “Consequential Hearings” are often not interesting. Not so the interesting tale of Neurim v Mylan [2021] EWHC 530 (Pat) (12 March 2021). This is the case that went (almost) all the way to the Supreme Court as Neurim fought to obtain an interim injunction (the SC thought it was a point of law of general public importance, but did not grant permission because trial was imminent). The saga continues…

In the UK Neurim won at trial (patent held valid and infringement was not contested) and so, given there was no interim injunction, they were keen to get to the consequential hearing and get their final order. Mylan was not, particularly in the circumstances. Hindsight shows they were right, but at the time the judge, Mr Justice Marcus Smith, thought Neurim were due their final order. The final order hearing was held on 16 December 2020.

What has happened since – well the TBA, at oral proceedings just 2 days later on 18 December, indicated it was going to uphold the OD’s decision to revoke the patent and decide against Neurim; prompting Neurim to withdraw their appeal. Thus, the OD’s invalidity finding became final, revoking the patent ab initio. 

This created a bit of a mess in the UK. The final order had not been sealed as the parties could not agree the wording. However, this just emphasises the well-known point that the order is made at the hearing – the written form is a formality (and creates the certainty of a written record).

We will not attempt to cover the details of this dispute here, those interested are best advised to read the judgment when it might be relevant to their own case, but there are a few points to note:

1. The jurisdiction to re-visit an order (sealed or unsealed) is covered in the circumstances of UK patent litigation with parallel EPO proceedings ([38] – [52]);
2. Neurim and Flynn tried to maintain their permission to appeal on the exclusive license issue, but this was refused ([57] – [67]); and
3. Mylan succeeded in its costs argument based on the (new) fact that, by including the EPO proceedings, it was the overall winner of the dispute ([68] – [88]).

This final issue is followed by “an interesting question” posed by Mr Justice Marcus Smith, he wonders whether the costs Mylan were due to pay would have been recoverable if the EPO hearing had occurred much later (in 2022) as the court had originally been told would happen ([93] – [95]). For practitioners probably the equally interesting question is how long after a UK final order can it be re-visited if the EPO subsequently decides to revoke a patent litigated and held to be valid in the UK. 

Finally, the Judge noted the, understandable, manoeuvring of both parties to maintain the UK trial in the face of EPO expedition that, arguably, made the UK trial unnecessary. However, he indicated it was something of which the court should have been informed when, after expedition in the UK was ordered, circumstances in the EPO changed ([89] – [92]). Practitioners are therefore reminded of the need to keep the court informed of key developments in any parallel EPO proceedings.