Dr. Vanessa Hill v Touchlight Genetics Ltd

Approved Judgment

This is a consequentials hearing following an application by the claimant for permission to amend the Amended Particulars of Claim in a patent entitlement action.

The application to amend was made against the background of orders for directions having been made at two CMCs on 10th November 2023 and 8th March 2024 respectively, leading to a trial with a time estimate of 11 days, fixed to commence in a five-day window from 25th November 2024.

The consequentials hearing has been concerned only with the issue of costs arising in circumstances where the application to amend was withdrawn very shortly after the two-day hearing, but before the judgment was handed down. In the absence of a substantive judgment, I need to begin by saying something about the background to the application.

The Background to the Application to Amend

In brief summary only, the existing claim arose against the background of a joint venture between the claimant and the Touchlight Group (“ Touchlight”) designed to facilitate the exploitation of technical innovations invented by the claimant, a molecular biologist. Pursuant to this joint venture, which dates back to 2007, the first defendant was incorporated and the claimant became a shareholder and executive director of the first defendant. Under a written Executive Director Service Agreement (“ the Service Agreement”) dated 8th July 2008, the claimant transferred intellectual property rights to the first defendant, including the right to be granted a patent for an invention.

Thereafter, Touchlight applied for, and obtained the grant of, various patents in a family for which the priority application was GB Patent Application No 0901593.4 (“ the Priority Application”) filed on 30th January 2009.

Relations between the parties very quickly broke down and on 9th March 2009 the claimant served a notice of termination of her employment on the first defendant. Her employment then formally terminated on 20th August 2009 and her resignation as a director of the first defendant was registered at Companies House on 9th November 2009. An International Patent Application No PCT/GB2010/000165 (“ the PCT Application”), which the claimant did not approve, was filed on 1st February 2010 (“ the PCT Application”).

The patents or applications in dispute in the patent entitlement action all derive or claim priority from the Priority Application and relate to aspects of a synthetic DNA vector (termed doggybone DNA or dbDNA) and its enzymatic production. The production method is said to allow Touchlight to make synthetic DNA vectors at the speed, scale and purity necessary to support the rapid growth of genetic medicines. The technology can be applied in fields including genome editing and DNA vaccines.

It is the claimant's case on her existing pleadings that she conceived of the technology over many years of research, that she disclosed her inventions to Touchlight before her employment by the first defendant, that she only assigned part of these inventions to the first defendant under the Service Agreement (namely ‘thermophilic’ or high temperature aspects), and that she remains entitled to the ownership of the other part of the inventions (namely ‘mesophilic’ or low temperature aspects). Accordingly, she says she is entitled to be a joint proprietor of the relevant patents and patent applications.

The claim to patent entitlement arises under section 37(1) of the Patents Act 1977 in respect of the granted patents in issue, which are confined to three UK designations of European patents, and under section 12(1) in respect of two pending foreign patent applications, one in China and one in the United States of America.

Touchlight's existing defence to this claim is many-layered, including (i) that the claimant did not devise or disclose the inventions to Touchlight before her employment; (ii) that, even if that is wrong, the Service Agreement operates to transfer all rights to all aspects of her inventions to Touchlight; (iii) that the claimant was involved in the Priority Application to which she raised no objection at the time; (iv) that the claim is time-barred; (v) that the claimant is estopped from making her claim; and (vi) that her claim fails for circuity of action. Touchlight counterclaims for relief arising from estoppel, unjust enrichment and breach of the claimant's duty as a director.

The proposed amendments, which were notified to the defendants by letter only on 25th March 2024, raised three entirely new causes of action for breach of fiduciary duty, breach of confidence and breach of an implied term of the Service Agreement. In addition, the proposed amendments sought to expand the claimant's case to encompass 49 granted overseas patents (“ GOPs”) relating to 28 different jurisdictions. These GOPs all claim priority from the Priority Application and derive from the PCT Application. The intention of the claimant was effectively to expand the existing claim so that it covered all the patents resulting from her original inventions. The relief claimed was to be amended to introduce, amongst other things, a declaration that the GOPs were held on trust “to the extent that the GOPs extend beyond processes based on the use of thermophilic bacteria”. The proposed amendments stretched across 14 pages of new pleading.

Three iterations of the proposed Re-Amended Particulars of Claim followed on 24th April, 21st May and 17th June 2024. The second iteration proposed for the first time that three GOPs, selected by the claimant herself, could be “tested” at the first trial “as specimens” and went on to plead particulars of breach of the Service Agreement, breach of fiduciary duty and breach of confidence only in relation to those three GOPs. The third iteration sought to advance a more detailed case in relation to the position of the second defendant.

The Hearing of the Application

The application was extremely hard-fought, over two full days, on 25th and 26th June 2024. Each side served lengthy skeleton arguments, albeit that the skeleton argument from the defendants was particularly voluminous, running to 76 pages. I was provided with an authorities bundle for the hearing, running to more than 80 tabs, around 62 of which were authorities on which the defendants relied.

The defendants opposed the proposed amendments essentially on two main grounds. First, that the proposed amendments should not be permitted on procedural grounds, namely that they were “very late”, and that the existing trial window could not conceivably be met if permission were to be granted. They served evidence, in the form of the third witness statement of Mr. Brian Cordery, focusing on the steps that would be required to address the new claims if the Re-Amended Particulars of Claim were to be permitted. Mr. Cordery also observed in his evidence that even if the proposal to proceed on a specimen basis only was permitted, that was likely to increase the trial length by several days, and he gave evidence that the court had informed him that it was unable to extend the existing trial window, and that any increase in the estimate would result in vacation of the trial.

Second, the defendants launched an attack on the proposed new claims, on the grounds that they had no real prospect of success at trial, that they were inadequately pleaded, and that there were strong limitation defences available. Their arguments were set out in detail in their skeleton argument, which was served in accordance with the Patents Court Guide by 10.30 a.m. on the day before the hearing commenced.

The length and content of the defendants' skeleton led Mr. Cuddigan KC (appearing at the hearing of the application on behalf of the claimant) to inform me at the outset of the first day of the hearing that the claimant felt at a significant procedural disadvantage. I asked Mr. Cuddigan what he wished me to do about that, to which he responded that he thought there was “rather more heat than substance” in the defendants' submissions, but that it was possible that he may seek an opportunity at the end of the hearing to put in short written observations on particular points or particular authorities. I observed that Mr. Cuddigan did appear to be at a disadvantage, owing to the timing of the service of the defendants' skeleton and went on to ask whether the claimant was seeking to adjourn the hearing. Mr. Cuddigan confirmed that she was not.

Against that background, the hearing proceeded. Mr. Cuddigan addressed the court on both the procedural and legal aspects of the application over the course of much of the first day of the hearing. This included addressing the court on various of the legal authorities on which the defendants relied, together with legal authorities on which the claimant herself relied. After the defendants' submissions on the second day of the hearing, Mr. Cuddigan commenced his reply submissions at 3.45 p.m., observing that he did not think he had a...