Oxford Nanopore Technologies Ltd & Anor v Pacific Biosciences of California, Inc & Anor [2017] EWHC 3190 (Pat) (14 December 2017)

IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
OF ENGLAND AND WALES
INTELLECTUAL PROPERTY (ChD)
PATENTS COURT

David Stone (sitting as Deputy High Court Judge) :

1. Is a licence an “exclusive licence” within the meaning of section 130(1) of the Patents Act 1977 (the Patents Act) if a third party has an option to take a licence under the patent, but has not yet done so?
   
2. That was the only question that remained to be decided at the Case Management Conference in these proceedings between, on the one hand, Oxford Nanopore Technologies Limited (ONT) and the President and Fellows of Harvard College (Harvard) (collectively, the Claimants) and, on the other hand, Pacific Biosciences of California, Inc and Pacific Biosciences UK, Limited (PacBio).
   
3. The question arises in the following way: ONT and Harvard have sued PacBio for infringement of EP (UK) No 1,192,453 titled “Molecular and Atomic Scale Evaluation of Biopolymers” (the Patent). PacBio have counterclaimed for revocation of the Patent. Nothing turns on the technology for the purposes of this point of law.
   
4. Harvard is the registered proprietor of the Patent. ONT takes its standing to sue from section 67(1) of the Patents Act, which provides that an exclusive licensee may bring patent infringement proceedings in its own name as follows:
   

“Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in the provisions of this Act relating to infringement shall be construed accordingly.”

5. Section 130(1) of the Patents Act provides a definition of “exclusive licence” as follows:
   

“‘exclusive licence’ means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and ‘exclusive licensee’ and ‘non-exclusive licence’ shall be construed accordingly.”

6. Section 67(3) of the Patents Act provides that where an exclusive licensee commences proceedings under section 67(1), the proprietor of the patent is to be made a party to the proceedings.
   
7. In short, PacBio say that the licence on which ONT relies (the ONT Licence) is not an exclusive licence because it is not “to the exclusion of all other persons”. The Claimants say that the ONT Licence is an exclusive licence at the moment, because the “option” a third party has to take a licence has not yet been exercised.
   

How the question arises

8. PacBio have, by application notice dated 11 September 2017, sought an order striking out ONT’s claim under CPR Part 3.4 on the basis that it discloses no reasonable grounds against PacBio or, in the alternative, that summary judgment be entered against ONT under CPR Part 24.2 on the basis that ONT has no real prospect of succeeding in its claim. PacBio also seek their costs of and occasioned by this application, and their costs of the action to date insofar as they relate to the issue of ONT’s standing to bring the action as an exclusive licensee. The Claimants resist the applications but they did concede that the question is appropriate for summary judgment, and, indeed, asked me to determine the question now, one way or the other. The parties are in agreement that if I find that the ONT Licence is non-exclusive, I should enter summary judgment and remove ONT from the proceedings. If I find that the ONT Licence is exclusive, then it is agreed that I should enter summary judgment for the Claimants on this issue.
   
9. Thus the parties agreed that I should decide the point now as a point of law: nothing will emerge in the evidence, it is said, that might assist the trial judge in the determination of the issue, and substantial costs may be saved if ONT’s involvement or otherwise in the proceedings is resolved now: see, for example, the comments of Arden J (as she then was) in Price Meats Limited v Barclays Bank plc [2000] 2 All ER (Comm) 346 and of Moore-Bick LJ (with whom Ward and Buxton LJJ agreed) in ICI Chemicals & Polymers Limited v TTE Training Limited [2007] EWCA Civ 725 at paragraphs 10 to 12.
10. During the course of the hearing, I was asked not to give an ex tempore judgment that day, but to reserve my judgment so as to have the benefit of a then forthcoming judgment of Henry Carr J in Illumina Inc and Ors v Premaitha Health PLC and Anor [2017] EWHC 2930 (Pat). Henry Carr J handed down his judgment in that case on 17 November 2017, and I have now had the benefit of reading his judgment, as well as written submissions on it from the parties. The parties agreed that no further hearing subsequent to Henry Carr J’s judgment was required.
11. Various claims to confidentiality were made in relation to various documents in the proceedings. By the time of the hearing, they had evaporated, other than in relation to the identity of a third party, referred to in the proceedings only as X. For ease, I, too, have adopted that nomenclature.
    

The Facts

12. The facts are agreed, and can be simply stated. Mr Alan Gordon, Director of Business Development at Harvard, has provided a witness statement, on which he was not cross-examined. I accept his evidence.
    
13. Mr Gordon’s witness statement sets out briefly the history of the ONT Licence. Harvard first entered into a licence with ONT in January 2008. That licence, according to Mr Gordon, has been “amended and/or restated several times over the years, culminating with the ONT Licence”.
    
14. The ONT Licence was entered into on 18 December 2015. A heavily redacted version of the ONT Licence was in evidence. It is unnecessary to set out more than a few clauses of it.
    
15. Three of the unnumbered recitals of the ONT Licence provide as follows:
    

“WHEREAS, Harvard and [ONT] entered into the Original Agreement, pursuant to which Harvard granted [ONT] an exclusive license under the Patent Rights, all in accordance with the terms and conditions of the Original Agreement; and

WHEREAS, after the execution of the Original Agreement, it came to Harvard’s attention that the Original Agreement did not account for certain rights under the Patent Rights granted [X] under a pre-existing collaboration agreement; and

WHEREAS, the parties accounted for these pre-existing rights by reforming, restating and replacing the Original Agreement with the Amended and Restated License Agreement;”

16. The Original Agreement was not in evidence.
    
17. Clause 2 of the ONT Licence is titled “License Grant”. Clause 2.1.1 of the ONT Licence sets out the grant of the licence from Harvard to ONT as follows:
    

“Exclusively Licensed Patent Rights. Subject to the terms and conditions set forth in this Agreement, Harvard hereby grants to [ONT] an exclusive, worldwide license under the Exclusively Licensed Patent Rights, solely (a) to develop, make, have made, market, offer for sale, sell, have sold, import and export Licensed Products (which, for clarity, shall include the right to license end users to use the Licensed Products sold under this Agreement) and (b) to perform Licensed Services; provided, however, that the exclusivity of the license granted under this Section 2.1.1 shall be subject to the following limitations:”

18. Amongst those limitations sits clause 2.1.1.3, which provides as follows:
    

Pursuant to a collaboration agreement between Harvard and [X] (“X Collaboration Agreement”), Harvard agreed to grant X upon request by X nonexclusive, transferable, royalty-bearing license(s) under the Encumbered Exclusively Licensed Patent Rights, to make, have made, use, offer for sale, sell, and import products that comprise or that incorporate any inventions covered by the Encumbered Exclusively Licensed Patent Rights, and to practice any methods that comprise or that incorporate any inventions covered by any Encumbered Exclusively Licensed Patent Rights (each, “[X] License”). … The licenses granted to [ONT] under this Agreement are subject to any [X] Licenses that may be granted to [X] (or its permitted assignee) upon [X’s] (or its permitted assignee’s] request in accordance with the terms of the [X] Collaboration Agreement….”

19. Further, clause 2.1.1.3 provides for Harvard to notify ONT should X (or its permitted assignee) request and be granted a licence.
    
20. It was accepted by the parties that the patent in issue in these proceedings fell within the grant of rights to ONT and the option available to X. Put a different way, the rights granted to ONT and the rights under the potential future licence to X overlap.
    
21. It was also accepted by the parties that X has an absolute right to a licence on request. Mr Gordon’s uncontested evidence was that the “option” available under clause 2.1.1.3 has not yet been exercised by X and that the collaboration with X came to an end in 2006. The Claimants’ solicitors confirmed in correspondence that X retains its right to request a licence under the Patent. Whilst it was the subject of correspondence between the parties, nothing now turns on whether Harvard’s collaboration with X has come to an end or not: it is conceded on behalf of the Claimants that X can still call for a licence at any time.
    
22. I should add for completeness that whilst the ONT Licence is stated to be governed by Massachusetts law, neither party urged on me the applicability of any law other than English law. The parties were also agreed that the use of “exclusive” in the ONT Licence to describe the rights granted to ONT was of limited assistance to me. It is a matter for the court whether or not the ONT Licence is exclusive: see for example, Dendron GmbH v University of California (No 3) [2004] EWHC 1163 (Ch); [2004] FSR 43 at paragraph 9.
    

The Parties’ Arguments

23. Mr Richard Meade QC, who appeared with Dr Stuart Baran for PacBio, submitted that clause 2.1.1.3 of the ONT Licence renders ONT’s licence under that agreement non-exclusive. Being the only licensee is not sufficient to be an exclusive licensee – an exclusive licence must be “to the exclusion of all other persons”. X has a right to work the Patent, which it can take at any time, without formality. X’s right is not conditional. Therefore X is not excluded, and the ONT Licence is therefore not exclusive. Mr Meade noted that the Patents Act, on its face, talks about exclusion – that is the test, he said, not whether there is currently another licence.
    
24. Mr Michael Tappin QC, who appeared for the Claimants, sensibly made a number of concessions. Importantly, and quite rightly, he conceded that if X exercised its option under section 2.1.1.3 to request and be granted a licence under the Patent, then at least at that point, ONT’s rights under the ONT Licence would be subject to X’s licence, and hence would not be exclusive. But his point, as set out in his skeleton argument and put in oral argument, was that whilst the ONT Licence provides an “option” (his word) for X to take a licence, X has not yet done so, and hence the ONT Licence remains exclusive to ONT at this time. X has a right to take an interest under the Patent, but it does not currently have an interest under the Patent. Hence X is currently excluded from working the invention, and the ONT Licence remains exclusive.
    

The Law

25. I was surprised to learn from counsel at the hearing that this question had never been decided in this Court. I was told that no assistance is to be gained from other areas of intellectual property law, where the statutory regimes are different.
    
26. By way of background, there is a helpful passage in the European Patents Handbook published by the Chartered Institute of Patent Attorneys, which explains the reasons for the right provided by section 67 of the Patents Act for an exclusive licensee to sue in its own name (emphasis added):
    

“Section 67 gives the holder of an exclusive licence the same power as the proprietor of the patent to sue for infringement occurring after the date of the licence, and the word “proprietor” throughout the [Patents] Act is to be construed (in relation to infringement) accordingly (subs.(1)). The exclusive licensee may then be awarded damages (or an account of profits) for infringement of his rights as exclusive licensee (subs.(2)). The proprietor is to be made a party to the proceedings, at least as a nominal defendant; he is not, however, liable for costs (expenses in Scotland) if he does not put in an appearance (subs.(3)). The section applies to infringement of rights arising from a pending application; see s.69(1). This power is an important one as the exclusive licensee may have suffered loss not suffered by the proprietor as such who cannot therefore claim for that loss. …

“Exclusive licence” is defined in s.130(1) and means a licence to the exclusion of all others, including the proprietor of the patent (or the applicant where the licence is granted under a pending application) of “any right” in respect of the invention to which that patent or application relates. The words “any right” appear to be very wide. …

So long as a licensee can establish that his licence is “exclusive”, even of the proprietor, in respect of some right under the patent, that is sufficient to entitle him to sue in his own right for patent infringement; and, once a claimant (and subject to registration of the licence), he can probably recover damages for any loss suffered according to the usual remoteness of damage principles.”

27. The primary decision relied on by all parties at the hearing was Dendron GmbH v University of California (No 3) [2004] EWHC 1163 (Ch); [2004] FSR 43, a decision of Pumfrey J (as he then was). Like this case, that case also concerned whether a party was the holder of an exclusive licence, but the issue was whether the sub-licence in issue was a licence “from the proprietor of a patent”. So the issue before the court was different, and neither Mr Meade nor Mr Tappin submitted that Pumfrey J had decided the point before me. But Pumfrey J said this in relation to the definition of an exclusive licence in the Patents Act, which both counsel suggested was helpful to me:
    

“A number of preliminary observations may be made in relation to this definition. The first is that the licence need not be a sole licence. The words “or on him and persons authorised by him” seem to me to contemplate a licence which confers upon the exclusive licensee a power to sub-licence. The essential element of the transaction appears to be the exclusion of all other persons including the patentee or applicant. Second, in my judgment the section cannot be contemplating a once and for all assessment. Take, for example, a licence that confers upon the licensee a straightforward exclusive licence to make use and sell objects falling within a claim. An exclusive licensee can expect to have to pay a higher royalty than a non-exclusive licensee, and his licence may well include a “best endeavours” clause or clause to a similar effect. Such licences not infrequently confer upon the patentee a power to convert the licence into a non-exclusive licence if minimum royalty provisions are not satisfied. If the patentee exercises such a power by notice, then of course the erstwhile exclusive licensee loses that status, and, it seems to me, must lose his power to bring proceedings.”

28. On behalf of the Claimants, Mr Tappin relied on Dendron for the proposition that a licence which is exclusive may become non-exclusive, in support of his position that the ONT Licence is currently exclusive, but may become non-exclusive on the exercise by X of its option. Mr Tappin also relied on the last sentence of the paragraph I have excerpted above: he submitted that it is not the power to make the licence non-exclusive that matters, but rather the exercise of that power. He relied on Dendron for the proposition that the fact that an event may happen in the future to make the licence non-exclusive does not mean that the licence is non-exclusive until the event happens. Mr Tappin’s position was that, at the moment, all other parties are excluded by the ONT Licence: hence, it is (currently) exclusive.
    
29. On behalf of PacBio, I did not understand Mr Meade to cavil with the statement of principle that an exclusive licence may become a non-exclusive licence, but he did say that the circumstances which Pumfrey J had in mind were very different to those in this case. He submitted that the circumstances referred to by Pumfrey J were those such as the licensee being required by the licence to keep up with minimum sales requirements. In such circumstances, he said, there is nobody else in the picture who can practise the invention: and it is a matter for the licensee whether it complies with the terms of the licence and maintains its exclusivity. There is, in my judgment, support for this submission in Pumfrey J’s statement “[s]uch licences not infrequently confer upon the patentee a power to convert the licence into a non-exclusive licence” (emphasis added). The power is with the patentee to alter the exclusive nature of the licence – it does not seem to me that Pumfrey J’s attention was directed to a situation where a third party can end the exclusivity on its own, untrammelled volition.
    
30. I have no difficulties in accepting that a licence may change from an exclusive licence to a non-exclusive one. Mr Tappin gave the example, and Mr Meade accepted, that an exclusive licence may contain provisions as to, for example, quantity or quality, which, if not met, enable the patentee to step in and work the invention itself, or to grant further, non-exclusive licences to other parties. I also readily accept that the exclusivity or otherwise of a licence is to be tested as at the relevant time, not at some date in the future. As Pumfrey J said at paragraph 9, “identifying an exclusive licensee depends entirely upon a proper construction of the document or documents by which he claims to be exclusive licensee”. Further, at paragraph 11, he said “[t]he essential element of the transaction appears to be the exclusion of all other persons including the patentee or applicant”. This repeats the statutory language of section 130(1) of the Patents Act. I respectfully adopt those two sentences of Pumfrey J’s judgment as helpfully guiding me in my task.
    
31. There is an onus point suggested by Pumfrey J’s comment in paragraph 9 of Dendron: “identifying an exclusive licensee depends entirely upon a proper construction of the document or documents by which he claims to be exclusive licensee” (emphasis added). This is echoed in the first sentence of the final paragraph of the CIPA Handbook excerpted above at paragraph [26]. Whilst it will not make a difference in many cases, it seems to me that it is a matter for an allegedly exclusive licensee to prove that it has a right to sue under section 67(1) of the Patents Act by proving it is an exclusive licensee within the definition set out in section 130(1). Whilst the question arises in this case on the basis of PacBio’s application to strike out ONT’s claim (or alternatively grant summary judgment against ONT on this point), in my judgment, it is for ONT to prove that it is an exclusive licensee, not PacBio’s task to prove that it is not.
    
32. I was also taken to Courtauld’s Application [1956] RPC 208, a decision of Lloyd-Jacob J sitting in the Patents Appeal Tribunal. The case involved an application to extend the term of a patent under section 25 of the Patents Act 1949 as a result of loss occasioned by the Second World War. By a 1937 agreement, an Italian company undertook to acquire for Courtauld an exclusive licence under patents which included the patent in suit. Courtauld was not in possession of a formal exclusive licence until after the material date, but argued that it had an equitable right to an exclusive licence at the material times. Lloyd-Jacob J was not asked to decide the question of whether Courtauld’s licence was exclusive or not. He instead asked himself:
    

“Is the power to call for such a document sufficient to meet the requirement of the section so as to constitute the holder of the power a holder of a licence? In my judgment, the language of the section is consistent only with the execution of an actual licence as a pre-requisite for consideration of any loss or damage, and this the applicants admittedly fail to establish.”

He dismissed Courtauld’s appeal.

33. Mr Tappin rightly did not seek to put significant reliance on a case construing a war statute dealing with extension of patent terms. But he did say that the case recognised that there is a distinction between a licence and a right to call for a licence. Mr Meade described the case as of “low relevance”, but nevertheless described the case as supporting his argument. Section 25 of the Patents Act 1949, he said, required a licence “to the exclusion of all other persons,” in similar terms to section 130(1) of the Patents Act.
    
34. I accept that Courtauld draws a distinction between a licence and an equitable right to call for a licence. But as Mr Tappin acknowledged, Courtauld was on very different facts, and different legislation. I therefore do not consider that it materially assists in answering the question I have before me, beyond the point made at the beginning of this paragraph.
    
35. That brings me to the judgment of Henry Carr J in Illumina.
    
36. Relevantly for present purposes, Henry Carr J had before him two separate questions in relation to exclusive licences. He dealt first in his judgment with the allegedly exclusive licence to what was described as the Lo 1 patent at paragraphs 242 to 253 of his judgment, concluding that “Illumina is not an exclusive licensee of the Lo 1 [p]atent within the meaning of section 130(1) of the Patents Act 1977” (headings omitted):
    

“242. Premaitha and TDL/Ariosa challenged Illumina’s title to sue as exclusive licensee in respect of Lo 1. Although the proprietor of Lo 1 is a claimant, this issue could be of relevance to quantum of damages.

243. Lo 1, and the other [p]atents, are subject to a Pooled Patents Agreement dated 2 December 2014 between Illumina and Sequenom (“the PPA”), which concerns intellectual property relating to NIPD. Illumina alleged that an exclusive licence under the Lo 1 [p]atent was granted by Sequenom to Illumina under Section 2.3 of the PPA. The Defendants submitted that this does not amount to an exclusive licence within the meaning of the Patents Act 1977 on the basis that the exclusive licence was granted to Illumina “and its affiliates”. The Defendants alleged that the inclusion of “affiliates” means that the licence is not exclusive.


 

244. Section 130 of the Patents Act 1977 defines an exclusive licensee as:

“a licence from the proprietor or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates.”

245. Section 1.1 of the PPA contains the following, amongst other, definitions:

“Affiliate” means, with respect to a Person, any other Person directly or indirectly controlling, controlled by, or under common control with, such Person at any time during the period for which the determination of affiliation is being made. For purposes of this definition, the term “control” means, with respect to any Person, the possession, directly or indirectly, of the power to direct or cause the direction of management policies of such Person, whether through the ownership of voting securities or by contract or otherwise.”

“Illumina Parties” means, collectively, Illumina and its Affiliates”

246. Section 2.1 of the PPA does not grant any licence, but rather indicates the overall purpose of the grant. Clause 2.1(a) provides that the Illumina Parties will have:

“The exclusive (even as to the Sequenom Parties), worldwide, sub-licensable right under the Pooled Patents to exploit NIPD IVD Products in the NIPD IVD Field.”

247. The material part of Clause 2.3(a) of the PPA provides:

“On the terms and conditions of this Agreement, Sequenom, on behalf of itself and its Affiliates, hereby grants to Illumina and its Affiliates an exclusive, irrevocable and perpetual (subject to Section 2.3(b)), non-transferable and non-assignable license (except as permitted under Section 9.1) worldwide license, with the exclusive right to grant sublicenses, under the Sequenom Owned Patents and Isis Patents, to Exploit NIPD LDT Tests in the NIPD LDT Field and to Exploit NIPD IVD Products in the NIPD IVD Field …”

248. Section 2.3(b) provides:

“The license rights set forth in Section 2.3(a) granted to any Affiliate of Illumina shall automatically terminate with respect to such Person when it ceases to be an Affiliate of Illumina. Persons that become Affiliates of Illumina after the Effective Date shall be licensed under the license rights set forth in Section 2.3(a) only for those licensed acts that occur on or after the date it becomes an Affiliate”

249. Illumina submitted that, in practice, because Illumina exercises effective control over its affiliates, none of them can operate the licence without its authority. It submitted that the relevant affiliates were persons authorised by Illumina within the meaning of section 130(1). Illumina relied on the first witness statement of Mr Welland, commercial and IP counsel of Illumina. He explained that Illumina has no ‘Persons’ within the definition of ‘Affiliate’ over which it does not exercise control, and therefore no Affiliate may operate the licence without its authority. He further explained that there is no Person who exercises control over Illumina, since it is a publicly quoted company with no shareholder who has a controlling interest. Therefore, Illumina argued that there is no Person over whom Illumina might not exercise control, or who might themselves exercise control over Illumina, who could claim to be an Affiliate under the agreement.

250. By his second witness statement, Mr Welland dealt with the relationship between Illumina and its wholly-owned subsidiary, Illumina Cambridge Ltd, through which it exploits third party intellectual property rights in the NIPD IVD field in the United Kingdom. Mr Welland stated that Illumina Inc has substantive control over the business decisions of Illumina Cambridge Ltd. Illumina submitted that, to the extent that Illumina Cambridge can and does use the method of the Lo 1 [p]atent, it does so under the authority and direction of Illumina Inc. In spite of a challenge to Mr Welland’s evidence based on the articles of association of Illumina Cambridge, I accept that Illumina Inc exercises de facto control over the activities of Illumina Cambridge.

251. Illumina argued that in the circumstances, the PPA is a licence conferring rights on Illumina Inc, and persons authorised by Illumina Inc, (to the exclusion of all other persons), as required by section 130(1). It argued that it makes no difference under the section whether an exclusive licence is granted to a parent company which can then sublicense to subsidiaries authorised by it, or whether the exclusive license agreement itself makes clear that the licence extends to those authorised subsidiaries.

252. I do not accept Illumina’s submissions on this issue, for the following reasons. First, the PPA expressly confers a licence on Illumina and its Affiliates. Pursuant to the PPA, Affiliates of Illumina do not need authorisation from Illumina to operate the licence in respect of the Lo 1 [p]atent, because they are licensees in their own right. This appears clear from the wording of section 2.3(a). It is confirmed by section 2.1(a), which provides that the Illumina Parties, which means Illumina and its Affiliates, are to have an exclusive licence under the Pooled Patents. It is further confirmed by section 2.3(b) that the PPA is not a grant of an exclusive licence to Illumina alone, with a power to sub-license its Affiliates. Illumina and each of its Affiliates, from time to time, are licensees. Therefore, Affiliates do not require an authorisation from Illumina Inc to exploit the Lo 1 [p]atent. Affiliates licensed by the PPA include not only Illumina Cambridge, but all other Affiliates of Illumina Inc, from time to time.

253. Secondly, in Dendron v University of California [2004] FSR 43 at [11] Pumfrey J (as he then was) considered the definition of exclusive licence in section 130(1). He said:

“The words ‘or on him and persons authorised by him’ seem to me to contemplate a licence which confers upon the exclusive licensee a power to sub-licence. The essential element of the transaction appears to be the exclusion of all other persons including the patentee or applicant.”

254. Accordingly, a licence is only exclusive under section 130(1) if it is granted to a single person, although he may grant sub-licences to “persons authorised by him“. The PPA does not comply with this definition, as it is a licence granted by the proprietor to a number of persons, even though one of them is in de facto control of the others. “

Mr Meade suggested, although not strongly, that this passage may assist me in determining the issue before me. Whilst it helpfully provides the statutory context, the Lo 1 licence before Henry Carr J was very different on its terms to the ONT Licence in this case, such that, in my judgment, the particular issue before me did not arise before Henry Carr J in relation to the Lo 1 licence.


The second allegedly exclusive licence discussed by Henry Carr J in Illumina related to what is described as the Lo 2 and Lo 3 patents. Here, the licensing arrangement was different to that in relation to the Lo 1 patents. For the Lo 2 and Lo 3 patents, the relevant allegedly exclusive licence was subject to two other rights – first, reserved rights for the patentee to use and develop the relevant patents for academic research and publication, and, second, reserved rights for the patentee to grant to the Hong Kong Government a non-exclusive licence in certain circumstances. Henry Carr J did not consider that either reservation negated the exclusivity of the licence. He said this:


“472. Illumina claimed that its rights as exclusive licensee under Lo 2 are recorded in the Pooled Patents Agreement and derive from the amended CUHK 2008 Licence and Novation Agreements. Lo 2 is listed in Annex IV to the Pooled Patents Agreement as a ‘Sequenom In-Licensed Patent’, defined as ‘all Patents in-licensed by Sequenom or its Affiliates immediately prior to the Effective Date under, and as set forth in, the CUHK Licenses (2008/2011)’.

473. The ‘Sequenom In-Licensed Patents’ are owned by the Chinese University of Hong Kong and were licensed to Sequenom under the CUHK Licences (2008/2011). The CUHK Licences (2008/2011) were amended and Sequenom assigned and novated these licences to Illumina.

474. Premaitha’s argument focused upon clause 2.4 of the CHUK licence which states that:

“2.4 University reserves the right to:

2.4.1 use and develop any of the Inventions and the Prospective Patent solely for academic research and publication purposes at all times provided that University provides a copy of any manuscript to Licensee, at the time of submission, for any publications submitted to a journal indexed by the Institute of Scientific Information; and to extend the academic research and publication rights, set forth above, to other collaborating academic organisations in whatever countries.

2.4.2 forthwith upon the request of the Hong Kong SAR Government (the “Government”) unconditionally grant to the Government an irrevocable, non-exclusive, perpetual world-wide, freely transferable, sub-licensable and royalty free license to use the Invention in such manner and for such purposes as may be decided by the Government. Such request will be made by the Government when in the opinion of the Government:

(a) the public mission of the Commissioner for Innovation and Technology of the Government or any person authorized to act on his behalf needs to be fulfilled; or

(b) it is in the public interest to do so.”

475. Premaitha argued that since CUHK had reserved rights to use and develop Lo 2 and Lo 3 for academic research and publication at all times, the licence was not exclusive to Illumina. My conclusion on this issue is the same as in relation to the Quake Patents. The reservation does not extend to authorisation of any third party for commercial purposes. The licence [is] an exclusive licence of the right to exploit for commercial purposes and, according to section 130(7) [I think this was a reference for section 130(1)] an exclusive licence may be in respect of any right.

476. Premaitha also relied on the reservation by CUHK of the right to grant to the Hong Kong Government a non-exclusive licence. However, the right to grant a licence to the Hong Kong Government is conditional and contingent on a request being made, which has not happened. The licence to Illumina remains exclusive since no other party has a licence nor is CUHK contractually able to grant a licence to any other party.”

The parties did not seek to rely on the reservation for academic research discussed by Henry Carr J in paragraph 475 of Illumina. Rather, both Mr Tappin and Mr Meade relied on Henry Carr J’s findings in paragraph 476 of Illumina as supporting their arguments.


Mr Tappin submitted that paragraph 476 of Illumina supports the Claimants’ submission in this case that the ONT Licence “remains exclusive unless and until any licence is granted by Harvard to X”: any grant of a licence to the Hong Kong Government was conditional and contingent on a request being made, which had not happened, and so the licence remained exclusive. Mr Tappin submitted that the facts that might lead X in this case (or the Hong Kong Government in Illumina) to make a request for a licence are irrelevant. Unless and until X makes that request, the ONT Licence remains exclusive.


Mr Meade submitted that paragraph 476 of Illumina does not assist the Claimants at all. He said that the licence in Illumina was different to the ONT Licence in that the Lo 2 and Lo 3 licence provided for the grant of a licence to the Hong Kong Government, but only on a request being made and if one of two other conditions was met. Those alternative conditions were set out in clauses 2.4.2(a) and (b) of the relevant licence: either that the public mission of the Commissioner needs to be fulfilled, or it is in the public interest to do so. In Illumina, no request had been made by the Hong Kong Government, and neither of the conditions set out in clauses 2.4.2 had been met. Thus, Mr Meade submitted, “when Henry Carr J concluded at the end of paragraph 476 that the patentee was not contractually able to grant a licence, that was because no request had been made and no valid request could be made”.


Mr Tappin submitted that Illumina illustrates the position identified by Pumfrey J in Dendron that where an exclusive licence may become a non-exclusive licence on the happening of relevant events, the licence is exclusive up to the point of the relevant event. In contrast, Mr Meade submitted that the ONT Licence includes “an absolute, indefeasible right to a licence immediately on request,” a difference to the Lo 2 and Lo 3 licence in Illumina. Because X can call for a licence at any time (unlike the Hong Kong Government in Illumina), the ONT Licence is currently non-exclusive.


I accept Mr Meade’s submission that there is a difference between the Lo 2 and Lo 3 licence at issue before Henry Carr J, and the ONT Licence, but, in my judgment, that difference is slight. The ONT Licence includes an unfettered right of X to request and be granted a licence at any time. The position in Illumina was different. The Hong Kong Government could not just ask for a licence, it first had to satisfy one of two criteria. But those criteria were not onerous: the first was that the public mission of the Commissioner needs to be fulfilled, and the second was that it is in the public interest to do so. It seems to me that in each case, if the Hong Kong Government wanted to exercise its option, it only needed to satisfy itself of something of which it could readily be satisfied. Indeed, it is difficult to imagine a government wanting to exercise an option if to do so would be against the public interest. There was a hurdle in Illumina, but it was a very low one. It does not seem appropriate to me to draw a bright line between that very low hurdle, and the similarly low hurdle of having to ask for a licence, the position in this case.


Conclusions

In my judgment, the following propositions can be drawn from the authorities and texts to which I have referred above:


i) Whether or not a licence is an exclusive licence for the purposes of section 67(1) of the Patents Act is a matter for English law: Dendron, paragraph 9;

ii) A licence which purports to be an exclusive licence may not necessarily be so. Identifying an exclusive licence depends on a proper construction of the document or documents: Dendron, paragraph 9. An exclusive licence will be expressly so: circumstances in which an exclusive licence will be implied will be rare, if they exist at all;

iii) It is for the party asserting that it is an exclusive licensee to demonstrate that it is: Dendron, paragraph 9;

iv) The assessment of whether or not a licence is exclusive is not a “once and for all assessment”: Dendron, paragraph 11. An exclusive licence may confer upon the patentee a power to convert the licence into a non-exclusive licence: Dendron, paragraph 11;

v) The “essential element” of an exclusive licence is that is it a licence to the exclusion of all other persons, including the patentee or applicant: Dendron, paragraph 11;

vi) It is possible to have a plurality of exclusive licences in respect of any one patent: Courtauld’s, page 210; Illumina, paragraph 475;

vii) But each exclusive licence may only be granted to one person – a licence will not be exclusive if granted to a number of entities, even if they are under the same control: Illumina, paragraph 254;

viii) An exclusive licensee may grant sub-licences to “persons authorised by him”: Dendron, paragraph 11; Illumina, paragraph 254;

ix) There is a distinction to be drawn between a licence and an equitable right to call for a licence: Courtauld’s, page 210; and

x) Where an equitable right to call for a licence is conditional (as it was in Illumina – the Hong Kong Government had to satisfy itself that the public mission of the Commissioner needs to be fulfilled, or that it is in the public interest to request the licence), the otherwise exclusive licence will remain exclusive unless and until the contractual conditions are fulfilled that enable the grant of the licence: Illumina, paragraph 476.

Turning to the facts of this case, I cannot draw a bright line between the ONT Licence and the Lo 2 and Lo 3 licence reviewed by Henry Carr J in Illumina. As set out above at paragraph 43, I accept Mr Meade’s submission that the ONT Licence and the Lo 2 and Lo 3 licence are different, in that, in order to exercise its option under the Lo 2 and Lo 3 licence, the Hong Kong Government must first clear a low hurdle. But I do not consider that that difference is sufficient to justify a legal outcome whereby the Hong Kong Government’s rights do not render that agreement non-exclusive, but X’s rights under the ONT Licence do. It cannot be the position that the exclusivity (or otherwise) of a patent licence depends on the difficulty of the hurdle a third party has to meet before calling for a licence. If the Lo 2 and Lo 3 licence is exclusive, then, in my judgment, so must be the ONT Licence.


I have reached this conclusion with some hesitation, given the practical sense of Mr Meade’s helpful submissions. But Dendron urges on me an assessment now, not “once and for all”. As Henry Carr J held in Illumina, assessed now, the relevant licence is exclusive. In relation to the ONT licence, whilst X has a right to call for a licence, it is currently excluded. Were it to work the invention, it would be infringing the Patent, unless and until it completed the contractual step of asking for a licence. That step is not an onerous one. But it is a step – a step which X has not yet taken, and may never take. As Mr Meade pithily put it: “[t]he bottom line is X can have a licence whenever it wants, it just has to ask”. But X has not yet asked. In my judgment, the ONT Licence remains an exclusive licence within the meaning of section 67(1) of the Patents Act.


Given that finding, as agreed by the parties, I shall enter summary judgment on that point in the Claimants’ favour.

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URL: http://www.bailii.org/ew/cases/EWHC/Patents/2017/3190.html

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