Illumina, Inc. & Anor v Premaitha Health Plc & Anor, Court of Appeal - Patents Court, March 19, 2018, [2018] EWHC 615 (Pat)

Resolution Date:March 19, 2018
Issuing Organization:Patents Court
Actores:Illumina, Inc. & Anor v Premaitha Health Plc & Anor

Neutral Citation Number: [2018] EWHC 615 (Pat)

Case No: HP-2017-000054 / HP-2017-000075





The Rolls Building

7 Rolls Buildings

Fetter Lane

London EC4A 1NL

Date: 19/03/2018



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Transcript of the Stenograph Notes of Marten Walsh Cherer Ltd.,

1st Floor, Quality House, 6-9 Quality Court, Chancery Lane, London WC2A 1HP.

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MR. IAIN PURVIS QC, DR. PIERS ACLAND QC (instructed by Powell Gilbert LLP) for the Claimants.

MR. THOMAS HINCHLIFFE QC and MS. GEORGINA MESSENGER (instructed by HGF Law LLP) for the Defendants Premaitha Health Plc and Premaitha Limited.

DR. MICHAEL TAPPIN QC and MR. JOE DELANEY (instructed by Herbert Smith Freehills LLP) appeared for the Defendant Ariosa Diagnostics, Inc. and (instructed by Clyde & Co LLP) appeared for the Defendants TDL Genetics Limited and The Doctors Laboratory Limited.

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  1. This judgment concerns the following applications: (1) an application by Premaitha that the claimants' claim number HP-2017-000054, be struck out in its entirety as an abuse of process or, alternatively, be subject to summary judgment as against the first claimant, Illumina, on the basis that Illumina has no cause of action, because it is not the exclusive licensee of the patent in suit; and (2) similar applications brought by Ariosa and TDL in claim number HP-2017-000075.

  2. The actions concern alleged infringement of EP (UK) 1 524 321 B2 entitled "Non-invasive detection of fetal genetic traits" by the supply and offer to supply of Premaitha's IONA non-invasive prenatal diagnostic test ("NIPT"), and TDL/Ariosa's Harmony NIPT..

  3. The application raises two issues: first, alleged abuse of process by each of the claimants. The defendants contend that the commencement of the actions in respect of EP '321, which I will call the '321 actions, constitute an abuse of the court's process and should be struck out, because they could and should have been brought in one or other of two earlier sets of proceedings which were brought by the claimants for patent infringement in relation to the IONA test, and in an earlier set of proceedings, brought against TDL and Ariosa in respect of the Harmony test. Those proceedings were all decided by me following a trial in July 2017; secondly, issue estoppel as against Illumina. The defendants contend that the issue of whether Illumina is an exclusive licensee of the '321 patent has already been decided against it in the earlier actions and that, therefore, summary judgment ought to be entered against Illumina.

  4. I need now to set out some of the history of these various proceedings. In March 2015 the claimants commenced proceedings against Premaitha in relation to infringement by Premaitha's IONA test of two patents known as Lo 1 and Quake 1 (the first Premaitha action). In September 2015 the claimants commenced further infringement proceedings against Premaitha in relation to infringement by Premaitha's IONA test of a third patent known as Lo 2 (the second Premaitha action). Subsequently, a further patent, which was a divisional of the Quake 1 patent, known as Quake 2, was introduced into the first Premaitha action and another patent known as Lo 3, which was a divisional of Lo 2, was introduced into the second Premaitha action. In January 2016, the claimants commenced proceedings against TDL/Ariosa in relation to infringement by Ariosa's Harmony test of Lo 1 (the first Ariosa action).

    Legal Principles - Abuse of Process

  5. I will now turn to the legal principles concerning Henderson v Henderson and abuse of process. In Johnson v Gore Wood [2002] 2 AC 1, Lord Bingham set out the basis of abuse of process in a frequently cited and very well-known passage at page 31:

    "But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole."

  6. He then went on to say:

    "The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party."

  7. He then concluded:

    "It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before."

  8. In a less well-known but nonetheless important passage in the judgment of Lord Millett at page 59, it was stated as follows:

    "It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen's right of access to the court conferred by the common law and guaranteed by Article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms (1953). While, therefore, the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the Court from abuse and the defendant from oppression."

  9. The principles identified by Lord Bingham in Johnson v Gore Wood were summarised by Clarke LJ in Dexter v Vlieland-Boddy [2003] EWCA Civ 14 at [49]-[53]. At [49] Clarke LJ said:

    "(i)Where A has brought an action against B, a later action against B or C may be struck out where the second action is an abuse of process.

    (ii)A later action against B is much more likely to be held to be an abuse of process than a later action against C.

    (iii) The burden of establishing abuse of process is on B or C as the case may be.

    (iv)It is wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive.

    (v)The question in every case is whether, applying a broad merits-based approach, A's conduct is in all the circumstances an abuse of process.

    (vi)The court will rarely find that the later action is an abuse of process unless the later action involves unjust harassment or oppression of B or C.''

  10. I have already referred to the observations of Lord Millett concerning Article 6 of the European Convention on Human Rights. Whilst it is undesirable to cite numerous authorities in support of the same proposition, in this particular case this principle is of great importance. Therefore, I will refer to certain other authorities where judges have articulated, in slightly different words, a similar principle.

  11. In Stuart v Goldberg Linde [2008] EWCA Civ 2, [2008] 1 WLR 823 at [65], Lloyd LJ cautioned against the striking out of genuine causes of action. He said:

    "The cases on this aspect of abuse of process include many reminders that a party is not likely to be shut out from bringing before the court a genuine cause of action. That point is now underwritten by Article 6 of the European Convention on Human Rights, but I do not think that this Article changes English domestic law at all. It is consistent with the Article to allow the court to strike out a claim which is an abuse of process, but at common law it must be clearly shown to be an abuse before it can be struck out. The court must consider, critically, any suggestion that a particular cause of action should not be allowed to be asserted because of the bringing of another proceeding based on a different claim.''

  12. In Clutterbuck & Others v Cleghorn [2017] EWCA Civ 137, Kitchin LJ summarised the position at [39]. He said:

    "The deputy judge was clearly conscious that he had to be jealous to ensure that a genuine claim could be brought and it would only be appropriate to strike out the claim as a Henderson v Henderson abuse in a rare or exceptional case."

  13. In Otkritie Capital International Limited & Others v Threadneedle Asset Management Limited & Others [2017] EWCA Civ 274, Arden LJ cited at 29 a summary by Lord Neuberger in Henley v Bloom at paragraphs 25 and 26, in support of the proposition that the starting point is that a litigant can decide whom to sue and when unless...

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