The UK Supreme Court, patent infringement, and the challenges of judging IP cases: In conversation with Lord Neuberger

Ron Dimock: Hello my name is Ron Dimock and I am an IP Litigation Partner in the Gowling WLG law office in Toronto, Canada. It is my pleasure today to have the Right Honourable Lord Neuberger of Abbotsbury as my guest for the next half hour or so. He is also known as Baron Neuberger but today I will call him David. Welcome David and thank you for joining me.

Lord David Neuberger: Good to be here Ron.

Ron: OK. Good. Now you and I share early career paths it seems. We both took science at University in the 1960's. You read chemistry at Oxford and I took engineering mathematics at Queens. We were both geeks and nerds I would suppose with no thought whatsoever about going into law. But eventually we did find our way and we both entered the practice of law in 1974 at the same time. But that is when any similarities in our respective careers ended. You had a stellar law career as a barrister for 22 years and a judge for 21 and now for the last three years a lawyer in a private practice again. In the judiciary you were a High Court Judge and an appellate judge then the youngest judge in the House of Lords. Then Master of the Rolls in the Court of Appeal and then if that was not enough you were appointed and served as president or what we would call the Chief Judge of the UK Supreme Court for five years from 2012 to 2017. David after all that what are you doing now since you are back in private practice?

Lord David: Well there's a convention that you don't get back to the Bar and practice in Court after you have been a judge. I don't think it's legally enforceable but I think once you have been a judge for 21 years you will be very ill-advised to try your hand at advocacy. So I am back in practice but the great majority of my work is as an Arbitrator a bit as a legal expert, independent expert, a bit as a Mediator and then a bit giving some second opinions and views of English Law and foreign litigation.

Ron: Do you miss the Bench now that you're back at the Bar so to speak?

Lord David: I feel I have been remarkably lucky in my career or I have been remarkably lucky in my temperament or both but I, each stage of my career I have really enjoyed and each stage that I have moved onto I have enjoyed as well. I do look back at being a judge and looking at some of the cases that the Supreme Court has got at the moment or has decided and felt it would have been fun to be there, it would have been an interesting case to do. So I do miss it to that extent but as I say I am lucky enough to have a busy time now and happy temperament normally and I like I said what I'm doing and I'm just very lucky to be able to be keeping busy now probably if I was more sane I would have a dignified leisurely retirement but at the moment I am enjoying being busy.

Ron: Well that's good to hear and I always thought whenever I have been with you your temperament has been very low and mellow and not anything what one might expect from a Lord.

Lord David: I don't know if my wife and children would agree but anyway.

Ron: Do you prefer being an Arbitrator to a Judge? Are there some aspects of it that you enjoy more or less as the case may be?

Lord David: I think the attraction of being a Judge particularly a senior Judge is that you do get to try some particularly interesting and potentially important and legally difficult cases. As an Arbitrator I find the cases very interesting and rewarding but the points of law tend to be more specific contractual interpretation what was said that sort of thing. On the other hand it's very odd when you cease being a Trial Judge in the UK like in Canada I think you stop hearing witnesses and you're very relieved not to hear witnesses but after 15 years of sitting as a Judge not hearing witnesses I am very pleased to be hearing witnesses again and you are more involved with the parties as an Arbitrator than you are as a Judge and that's fun and you have different people you're sitting with as an Arbitrator as particularly in the Supreme Court you tend to be sitting with the same people. Much as I like them it's interesting to have the diversity. So then I have to admit not the most attractive point but you get paid more as an Arbitrator than you do as a Judge which if I'm honest is another attraction.

Ron: I've heard it said from you that one good piece of advice that you received about becoming an Arbitrator was from a Judge who helped you become an Arbitrator and his advice was do not sit above the fray and you shouldn't be too judgey to quote.

Lord David: I think it's quite difficult to get it right but I think you are however much you try not to be as a Judge after been sitting in Court year after year with people being polite and respectful and laughing at your jokes you tend, and also the nature of the job you're performing a public function which is responsible however hard you try it can go to your head a bit. You are somewhat remote, you are conscious that you are occupying an office which requires you to be, it will be friendly but it does require a degree remoteness, I suppose a superiority in some ways. As an Arbitrator you don't quite have that you are appointed by the parties, you are part of a contractual arrangement and you mustn't be too judgey, that's quite right. I'm fortunate that that comes I think maybe I deceive myself it comes to me reasonably easily.

Ron: Well that seems to be the case. Our audience today David has a special interest in intellectual property law and particularly patent law and one of your closest colleagues as I understand it and best friends that you had when you started off as a High Court Judge in the Chancery Division in the late 1990's was from Nicholas Pumphrey a well-respected patent Judge then and throughout his time on the Bench. Did Sir Nicholas stir your interest in IP and to hear IP cases?

Lord David: When I became a Judge I had never seen a patent in my life. I had no experience.

Ron: Oh so lucky.

Lord David: And they were short of Patent Judges. Up 'til then almost all Patent Judges had been specialising in patent so there have been exceptions like Lennie Hoffmann an exceptionally abled Judge who took to patents very quickly but they were casting around for another Judge to do patents and they discovered as you have mentioned that I had a chemistry degree. So I was appointed a patents Judge and it was a steep learning curve and I think, I seriously would have been worried about my capability to cope if I hadn't been lucky enough to be in the Court under Nick and I would go up to Nick for advice and assistance in patent cases and nobody could have been more helpful and more prepared to give up his time to help me on this. He didn't tell me the answers but he explained to me the concept, he explained to me where to look and so on and I have to admit on a couple of cases he did check my judgments just to make sure that I wasn't talking complete nonsense, hadn't missed some obvious point or got some terminology wrong and apart from being enormously fond of me I am enormously grateful to him for the help he gave me.

Ron: And I understand that you didn't hear your first patent or IP case until you had been on the Bench for three years. What case was that David?

Lord David: Well I think the first case I heard was what Nick always warned me were what seemed the easiest but are the most difficult which was a mechanical patent and it was either a patent involving some sort of metal working or it was a case involving a patent for infringement of a patent for laying tarmac. The two were around the same time and I can't remember which came first but one was unusual it was the first fully fledged patent case held outside London in Birmingham. So Birmingham and I both came to patent cases rather late.

Ron: Did not being a patent lawyer or an IP lawyer to begin with affect the way you approached hearing and deciding IP cases and particularly patent cases?

Lord David: It undoubtedly had disadvantages. I mean the analogy I gave to the patent practitioners when I had spoken to them after three years of being a Patents Judge was that they and I were over the top of a hill and for them the whole of the landscape the whole of patent law was in full sunlight. For me it was complete darkness. If a I had a case on a particular point it was as if a search light had come on and illuminated a small part of the landscape and the advantage of being a Judge and experienced lawyer is that you understand how to concentrate on that bit of a landscape, you do understand and can pick up the points that are involved because that's part of your culture and experience but the disadvantage is that you don't necessarily see where the case lies and what the implications of your decisions are in the overall context and the advantages of course in theory at any rate you bring a fresh mind. There's an element of emperor's new clothes, you're the boy who says that why do you always do this, isn't what the statute says and sometimes you are shown to be talking complete nonsense and it is what the statute says you've misread it, but other occasions there is something in the innocent question from the person who comes fresh from the topic.

Ron: That's interesting. I've experienced that with Judges who hear patent cases here in Canada who have had no patent law experience. You get some good points in either case. Someone with the experience and someone without but I understand that the most difficult case you ever decided was a patent case and that was the Kirin-Amgen Inc v Hoechst Marion Roussel Ltd[2005] case that you heard as the Trial Judge. I guess it was 20 years ago at the start of the millennium and it was a patent case that went all the way to the House of Lords and why do you say it was the most difficult case you ever tried?

Lord David: I think it may or may not have been the most difficult case I tried. The reason that I think I could have described it as that was because it lasted 30 days and of those days probably 25 days were evidence. There was quite a number of points to be decided which were obviously were connected but which were different discreet points of principle relating to science. There was a Nobel Prize Winner giving expert evidence on each side. There was an awful lot of material to go through and I had been a Patent Judge for probably a year or so, two years possibly at the most and it was all very new territory to me and while as I say I'm slightly hesitating saying definitely it was the most difficult case I did, it probably was when you add all the implications together and maybe I should have stayed being a scientist rather than becoming a lawyer because by the time it got to the House of Lords they were very polite about my description of the science but not quite so polite about my analysis of the law.

Ron: Yes it seems that Lord Hoffmann thought you had it wrong, got it wrong and found that there was no infringement when in fact you had found infringement at the trial and it was a patent as I have read on genetic engineering of a erythropoietin the protein that stimulates the production of red blood cells and.

Lord David: Yes I often think of it as the acronym case because there was wonderful confusion because erythropoietin as you say the substance which was basically the subject matter of the case it was known everywhere as EPO but to patent lawyers EPO means the European Patent Office. That was another source of confusion particularly during a new boy like me.

Ron: Yes well we have in Canada the CPO.

Lord David: Right.

Ron: Now Sir Hugh Laddie another well-respected Patent Judge and he referred to the Catnic case which was decided in the early 1980's by Lord Diplock in the House of Lords where the purpose of construction of patent claims was proclaimed to be the law of the land. Sir Hugh described that Catnic was the penultimate step on the road to the adoption of a narrow unforgiving approach to the determination of the scope of protection namely infringement and that the ultimate step was the decision of Lord Hoffman in Kirin-Amgen 20 years after Catnic. That comes from Sir Hughes' instructive article entitled Kieran Kirin-Amgen the End of Equivalents. For some it sounds like a title to a Don Henley song but in any event you cited that article in your decision Actavis v Eli Lilly decision which we'll come to in a moment. In your view David was Sir Hugh right about Catnic and Kirin-Amgen having led to a narrow and unforgiving approach to infringement?

Lord David: Yes I mean it was in English law we had as I see it to misuse the expression equivalence made an equivalence between interpretation and infringement. In other words if the patent said was limited to X then you didn't infringe unless you did X and the fact you did something very close to X or the equivalent of X didn't matter because it wasn't within X and that was the effect of where we got to with Kirin-Amgen in the House of Lords.

Ron: Well we'll come to your case in Actavis v Eli Lilly but if you think back in the early 2000's then about 15 years later after you had got Lord Hoffman's decision that you'd have a chance to decide and proclaim a different approach to patent protection?

Lord David: Did I think I would do that when I saw his decision?

Ron: Generally speaking did you have a chance to reverse this?

Lord David: No it never crossed my mind. I am not sure. Others will have to decide. I am not sure whether our decision reversed it which you're quite right to say that it effectively it said things have moved on. We didn't disagree with Lord Hoffman about the interpretation of patents but we disagreed with him about infringement and to be fair to him and me I think the reason we disagreed with him was because the European Patent convention had effectively introduced the doctrine of equivalence in an agreement which wasn't in force when Kirin-Amgen was decided although it's fair to say that Lord Hoffman was pretty unenthusiastic about it in some comments. That was how we did it.

Ron: Now the case which I am referring to and we talked about the Actavis V Eli Lilly when you decided in the Supreme Court in 2017 just before you retired from that Court. Did that case hasten your decision to retire?

Lord David: No. I have to say that referring back to a question you asked me a moment ago. I didn't want to retire. If I'd been able to stay I would have stayed for a few years longer if I could. I am not sorry in retrospect that I didn't although in some ways I am sorry but I had to go at 70 and I became 70 in January 2018 and our legal year begins in October and I thought I should go at the beginning of the legal year starting October 2017 and that's really why I went and Actavis certainly didn't hasten my going no.

Ron: Well it's nice to be 70. I can say that from my own experience.

Lord David: Well the only way you don't get to 70 is rather unpalatable so I hope...

Ron: Now the Court in Actavis sat as five the usual number as I understand it although there are eleven on your Court. Can you sit with a greater number than five on any appeals?

Lord David: There are in fact 12 but you can't, you only have to sit odd numbers so you're right you couldn't have more than 11. We sit, the Supreme Court sits five regularly, seven on cases where we might reverse another case or where it's important, nine in very exceptional cases and on two cases it's been 11.

Ron: And then the one case with 11 was to do with the Brexit issue.

Lord David: Both have raised important constitutional issues arising directly or indirectly out of Brexit that's quite right.

Ron: Now it's interesting that decades ago in Canada all the Judges of the Supreme Court of Canada sat on every patent appeal to that Court, nine in number even though they could sit on such appeals with less than a full bench. They wanted to spread the misery around. And does the President of the United Kingdom Supreme Court have to call for volunteers on patent cases or are they interested nonetheless?

Lord David: It may have changed although I very much doubt it has where the President of the Court together with the Deputy President decides normally who should sit on which cases and how many people should sit and the drafting is of the list is normally done by the Registrar and then the President, the Deputy President consider it, make amendments and so on. Occasionally you got people, you really got people saying do I have to sit on this. You've got people who one way or another would be saying can I sit on one or not and they did try and allocate it fairly so that everyone had their share of less interesting cases and everyone had their share of more interesting cases.

Ron: Now I just I'll just ask a few questions about the Actavis case and then move on but according to Lord Kitchen who is now on that Court in a more recent case when he was still in the Court of Appeal in a case called Icescapes as I recall, he wrote that you introduced in Actavis a markedly different approach to deciding patent infringement and than been applied in the United Kingdom previously. Is that a fair assessment?

Lord David: I think it is. Yes I think we, I would say we acknowledged the rules as they had been developed in the European Patent Convention and a Protocol which had been amended and which introduced in our view effectively the doctrine of equivalence. The advantage of the Lennie Hoffmann rule, the advantage of the rule that Hugh Laddie wasn't very keen on was that it's a usual problem in law was that it was certain. You knew what the patent said and either you were within the words of the patent or you weren't and if you were with them at odds you infringed and if you weren't you didn't. What we developed I say as regards to the protocol was that the doctrine of equivalence did have an application and therefore even if you weren't within the words of the patent you could still infringe. The advantage of that is that it's more just. It catches calculated infringements that just avoid the words but it does introduce more uncertainty into the law so but the short answer to your question is we did change the law as it was understood to be.

Ron: Another change as I understand and we have had that, this other change introduced to our law by way of statutory amendment but you in the common law admitted evidence or took account of evidence from the patent prosecution file as to when it might affect the assessment of equivalents and in the Actavis case you found that such evidence would not affect your assessment of equivalents.

Lord David: I think we said sometimes Judges are their worst guide to their own decisions. I think we said that normally you shouldn't look at the prosecution file but occasionally you could and if you could in this case it nonetheless didn't make any difference but you may be right.

Ron: Well I don't want to.

Lord David: Should have done my homework for this interview better hadn't I.

Ron: Well it's quite alright. Some say and I know there was a heated debate after your decision came down that some thought that the Actavis case decision swayed the balance too far in favour of the patentee and there was a debate one way or the other and so on. Do you accept that characterisation or I think the patent system has to be fair to both sides, the public and the inventor for having disclosed a meritorious invention but here in Canada my view is that it's very difficult to prove infringement now with purposive of construction and so on but did the Actavis case turn it more too far in favour of the patentee here do you think?

Lord David: I think it is I'm not really able competently to answer. I mean one of the problems which I did identify in another case in the Supreme Court is that really what the test should be is defined by lawyers and what the test should be in the public interests should not be a matter of law. It's more a matter of economics or social justice call it what you will and in a case we had involving how far you had to have enabled something before you could patent it that issue seemed to me to be very much a question of what was economically fair and realistic and that's not quite how the legal rules are based on that but once you've set the legal rule you then apply the rule rather than look at what's fair and I do not think that Actavis is the last word in English law I think on the topic (a) because there's never a last word but if there was I think either somebody will say it's wrong or they'll tweak it or they will develop and explain the idea and precisely what the tests are for equivalence.

Ron: Now let's talk a bit about as we've talked about the past, let's talk a little bit about the future maybe the recent past. A mere six weeks ago your former court, the United Kingdom Supreme Court issued its decision on standard essential patent and FRAND in Unwired Planet v Huawei. There the Supreme Court said that it had jurisdiction to grant an injunction if a party infringes a standard essential patent but refuses a FRAND fair reasonable non-discriminatory licence available from the patentee to practice the invention of that patent. So that seems to be an indication that you have said that your former Court is keen on advancing the law of intellectual property and particularly patents having taken that on for appeal. And as I understand it Lord Kitchen one of the barristers for the defendant in the Kirin-Amgen case is now on the United Kingdom Supreme Court so it's apparent that patents and IP cases will continue to be welcomed in that Court. Here's my final question. What key patent issues do you see developing and being litigated in the Courts in the foreseeable future?

Lord David: Well so far as what I am not sure I can actually pontificate about what types of patents clearly there are going to be a lot on I suspect depending on what advances are made in the pharmaceutical industry particularly post COVID. There may be quite a lot there. I suspect as the, as you say the standard patent case decision in the Unwired Planet v Huawei there will probably be quite a lot of litigation about that. Maybe that's been put to sleep by the decision of the Supreme Court but I think more generally what the decision of the Supreme Court there the issue there shows is that not merely are we in a much more international world generally but when it comes to IP the international aspects are particularly demanding and I think the Huawei case was an indication of the desirability if one could of having more international type Courts and international law or international law in the sense of national laws that are connected and consistent with each other because the Supreme Court was in the end faced with two choices, one was in general terms in that case, one was saying that really all we can do is to fix the position in the UK and leave everybody to sort out the appropriate rates in their own jurisdictions which would have largely destroyed the purpose of FRAND or they have found themselves in a position of fixing rates across the world which was extreme jurisdiction but at least gave FRAND its intended effect but the problem of course is if other countries do the same thing you get the inconsistent decisions and I think the whole of FRAND is an example of the desirability of having some social system for internationalising or at least ensuring a degree of consistency between the patent laws and IP laws of different countries. This sort of thing is easier to say but is extremely difficult to achieve.

Ron: Yes the harmonisation of patent laws has been sought after for decades.

Lord David: I mean even within Europe we attempt to have a European EU Patent Court is sort of spluttering along but it's been going for years and if you can't even get it within the EU that already link together with Courts but some sort of accord, some sort of understanding, some sort of agreement would I think even if it's limited be highly desirable, but maybe it's asking for the moon.

Ron: Well we shoot for the stars and get to the moon and now we're shooting for Mars. But David I'm grateful to you and I'm sure so is our audience for your spending time with me today and having a lively conversation about law, IP law and your perspectives on it. Thank you very much David.

Lord David: Thank you. Very good to talk.