Bristol-Myers Squibb Holdings Ireland Unlimited Company v Patents Acts 1992 – 2019

• Jurisdiction: Ireland
• Judge: Mr Justice Max Barrett
• Judgment Date: 26 June 2023
• Neutral Citation: [2023] IEHC 376
• Court: High Court
• Docket Number: [2021 No.1 PAP]

In the Matter of Irish Patent Number European Patent (IE) 1 427 415 ‘Lactam-Containing Compounds and Derivatives Thereof as Factor XA Inhibitors’

and

Registered in the Name of Bristol-Myers Squibb Holdings Ireland Unlimited Company

and

In the Matter of the Patents Acts 1992 to 2019

[2023] IEHC 376

[2021 No.1 PAP]

The High Court

JUDGMENT of Mr Justice Max Barrett delivered on 26 ^th June 2023 .

1 . This judgment is divided into two parts. Part A deals with the application made under O.31, r.11 RSC. Part B deals with the application concerning the form of the undertaking to be given as the ‘price’ for the injunction granted.

Part A

The Order 31, r.11 RSC Application

2 . By notice of motion of 1 June 2023, Teva seeks, amongst other matters, an order pursuant to O.31, r.11 RSC requiring the respondent to answer further by viva voce examination, Interrogatories §5.20 and §5.22, served by the petitioner on 19 ^th May 2022. In fact, only Interrogatory §5.22 is now the focus of this application, albeit in this judgment it has been necessary to refer also to Interrogatories §5.17 and §5.20.

3 . I have touched upon the facts underpinning these proceedings at some length in my judgment on whether or not to grant the injunction and do not propose to repeat those facts here, save insofar as is necessary.

4 . Throughout this judgment, even when quoting from documents that refer to full company names, I have found that it aids understanding to use ‘BMS Pharma Company’ for ‘Bristol-Myers Squibb Pharma Company’ and ‘BMS Company’ for ‘Bristol Myers Squibb Company’.

5 . Unusually, I will commence my Part A judgment with a statement of the applicable law as it will make my consideration of Teva's application more comprehensible.

6 . Order 31, rule 11 RSC provides as follows:

‘ If any person interrogated omits to answer, or answers insufficiently, the party interrogating may apply to the Court for an order requiring him to answer, or to answer further, as the case may be; and an order may be made requiring him to answer or answer further, either by affidavit or by viva voce examination, as the Court may direct.’

7 . For the rule to apply, it must be shown that the interrogated party has either failed to answer an interrogatory or has answered it insufficiently. Teva relies on the latter limb, viz. that the answer to Interrogatory §5.22 is insufficient.

8 . In IBB Internet Services Ltd and Ors v. Motorola Ltd [2013] IEHC 541, Charleton J. considered an application by the defendant that the secretary of the plaintiff companies should be required to answer by means of viva voce examination the interrogatories delivered by the defendant. (The background to that application was that the plaintiff's original replies contained a series of errors that were likely attributable to numbering/referencing mistakes. These were rectified in the second set of replies. In the course of his judgment, Charleton J. observed as follows (at §12):

‘ Even had there been a failure to satisfactorily answer an interrogatory, it is impossible to imagine the circumstances under which a party answering should be brought to court to be examined generally. Even an examination on specific questions will be rare indeed. An examination of some kind would not be impossible, since that is provided for in the rule. Before embarking on such course, however, the court should bear in mind that the principle adopted in our system is that the unitary trial is in general the mode of disposal of the case unless a preliminary issue of law or a modular issue will genuinely help in disposal and not cause irremediable prejudice. It is also important that any examination of a party or witness prior to trial should not become the trial itself….Should discretion on this rule be exercised in favour of either requiring a party to swear an affidavit or to appear and be questioned in court, any such leave must and should be directed towards specific numbered questions. It seems outside the text of the rule to envisage circumstances where a party would be granted leave to engage in a general cross-examination in advance of the trial. Any such procedure is properly to be confined to trial. Furthermore what is at issue in the rule is whether a party has answered an interrogatory or has answered the interrogatory sufficiently. It is no part of the discretion vested in the court to make any such order on the basis that it may appear that the answer is untruthful. That is a matter for the trial. As Cotton L.J. shrewdly stated in Lyell v. Kennedy… [1884] 27 Ch.D. 1, ‘with regard to the form of discovery by answer to interrogatories, what the court has to consider is simply whether the answer is insufficient. It has not to go into the question of the truthfulness of the answer, but must see whether it is insufficient or not.’’

9 . My attention has also been drawn by Teva to the observations of Charleton J. (at §11) as to the obligation on a party answering interrogatories to correct any error immediately. I do not see that this aspect of the judgment of Charleton J. is especially relevant to the case before me. Here, BMS considers that its answers to the interrogatories posed to it are sufficient, which implicitly involves a contention that they are also correct: I do not myself see how one could properly contend that an answer which was wrong and which was known or became known to the interrogated party to be wrong could be, or could continue to be, described properly as sufficient.

10 . When it comes to Charleton J.'s observation that ‘Even an examination on specific questions will be rare indeed’, I asked both lead counsel at the hearing of this application ‘how rare is rare?’ Both counsel have long experience of practice and neither, I understand, are aware of the jurisdiction having been exercised previously, though both accepted the jurisdiction to exist. Counsel for Teva gave a more detailed answer to my question and I respectfully agree with his statement of the position at law and in the present case, as stated in the following quotation from his answer to my question:

‘ Counsel: It's relatively rare and there would have to be a clear basis for doing so, which we say [exists] here….I think the way you approach the rare – I mean I genuinely can't say, but all I can say, Judge, is…it doesn't happen every day. You get cross-examination on discovery more often than you get cross-examination on interrogatories. And normally people are careful in replying and giving an answer. You may not like the answer; tough luck you didn't get a good answer and sometimes people say we shouldn't have asked that question. The rareness arises…only where there is an insufficiency….You can't say, you should have told us that before. You can't say, why did you give us a different [answer]…if the answer makes sense even if it's one that is inconsistent, it doesn't matter. You can't ask, ‘please explain the errors that you made previously’….I cannot recollect, in my time…seeing an answer to an interrogatory that is self-contradictory on its face…[T]hat is the rare occasion….[H]ere, as Mr. Justice O'Moore said, it is critical — is how he put it – that…[Teva] can challenge the policy because whatever way you express the policy, you rely on that to sustain priority. If priority isn't sustained, the patent fails for novelty and we never get into an examination of the plausibility issue that is the other issue in the trial…. So, that's why I think we meet the test….[I]t's hard to think when you would do it, other than somebody refusing to answer at all. But of course you can achieve a similar outcome, I don't want to be disparaging, but you achieve a similar outcome by giving an answer that's nonsensical. And it's like the witness who gives the nonsensical answer and you pursue it and say you haven't answered the question. And that's why I think we meet it here.’

11 . A key message to be taken from the just-quoted submission is that it is the very oddness of the situation that presents here, in which (a) the party interrogated has given an answer that, on its face, is inherently contradictory, and (b) the centrality to these proceedings of the interrogatory/issue in respect of which the inherent contradiction arises, that has yielded a situation in which a relief that is rarely granted can properly be ordered.

12 . Charleton J. mentions the decision of the Court of Appeal in Lyell v. Kennedy (number 3) [1884] 27 Ch.D. 1. That case involved an appeal by the plaintiff from an order of Bacon V.C., dismissing a summons taken out by the plaintiffs asking for a declaration that the defendant's answer to interrogatories was, having regard to the answers to certain interrogatories specified in the summons, insufficient, embarrassing and ‘impertinent’ – I suppose for this last term we would nowadays state ‘not pertinent’ or ‘irrelevant’ – and sought, amongst other matters, that the defendant might be ordered to file a further and better answer.

13 . Among the conclusions reached by the Court of Appeal in Lyell (and this remains good law in Ireland today) were that the duty of the court when it comes to answers to interrogatories is limited to considering the sufficiency or insufficiency of an answer. Notable among the observations of the Court of Appeal judges, when it comes to the application now before me, is the observation of Cotton L.J., at 16, that ‘ I say he has not answered, because he has answered it in such a way that we cannot tell what he wished to state and what to deny’.

14 . As will be seen hereafter, this is a case in which an interrogatory has been answered in such a way that it is, on its face, inherently contradictory. The answer points in one direction; materials referenced therein point in the other direction. I do not myself see how such an answer could be described as sufficient. I am buttressed in this conclusion...