Neutral Citation Number: [2001] EWCA Civ 77

Case No: 2000/2196; 2000/2196A; 2000/2214; 2000/2214A
 
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION
MR JUSTICE JACOB
Royal Courts of Justice
Strand, London, WC2A 2LL
Tuesday 30th January 2001
B e f o r e :

LORD JUSTICE ALDOUS
LORD JUSTICE BROOKE 
and 
LORD JUSTICE SEDLEY
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(1)  OXFORD GENE TECHNOLOGY LTD
(Claimant/Respondent)
and

(1)	AFFYMETRIX INC 
(2)	AFFYMETRIX UK LTD
(3)	BECKMAN COULTER INC
 (Defendants/Appellants)
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(Transcript of the Handed Down Judgment of
Smith Bernal Reporting Limited, 190 Fleet Street
London EC4A 2AG
Tel No: 020 7421 4040,  Fax No:  020 7831 8838
Official Shorthand Writers to the Court)
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P. Leaver QC and Miss C. Bingham (instructed by Bristows for the Appellants/First and Second Defendants)
D. Mackie QC and T. Fancourt (instructed by Allen & Overy for the Appellants/Third Defendants)
A. Wilson QC and Miss T. Holman (instructed by Manches for the Respondent/Claimant
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Ruling on Costs
LORD JUSTICE ALDOUS:
1.  After the judgments were handed down we made an order, but reserved for further consideration the dispute between Affymetrix and OGT as to who should bear the costs of and relating to the application by Affymetrix to introduce fresh evidence.  That dispute was due to be resolved at a further hearing, but subsequently the parties agreed that it be determined upon the written submissions of the parties.  

The Background
2.  Under a licence agreement Beckman held a non-exclusive licence from OGT.  Affymetrix asserted at trial that, pursuant to that licence, it was entitled to a sub-licence pursuant to a “consortium” agreement between Beckman and Affymetrix, alternatively because Affymetrix had acquired the relevant business of Beckman.  

3.  The judge decided both issues against Affymetrix.  He held that the arrangement between Beckman and Affymetrix did not result in Affymetrix joining a relevant consortium (the consortium point).  He went on to hold that the activity of Beckman acquired by Affymetrix did not amount to a business as referred to in the licence.  It followed that the assignment to Affymetrix of that activity did not trigger transfer of the licence as that only occurred if Affymetrix succeeded to Beckman’s “business in products licensed hereunder”.  That last conclusion was based upon the judge’s finding of fact that the activity of Beckman had not proceeded to where sales about started.  

4.  This Court agreed with the judge on the consortium point.  However the appeal was allowed because we concluded that the activity of Beckman, at the date of its transfer to Affymetrix, constituted a business in the sense that that word was used in the licence agreement.  As a consequence there was no need to look at the relevance nor the admissibility of the fresh evidence.  

The Fresh Evidence
5.  The fresh evidence sought to be introduced fell into two categories.  First documents in the possession of Beckman which were said to show that the activity of Beckman was more extensive than that found by the judge.  Second documents in the possession of OGT from which it was said it could be inferred that the activity of Beckman was greater than that found by the judge.  

6.  As to the first category, there were seven boxes of documents disclosed by Beckman to OGT.  Affymetrix knew of the boxes.  They never applied to see them, but say that they were effectively excluded from seeing them.  

7.  As to the second category of documents, they were disclosed on discovery in the USA under protective order, but they were unknown to Affymetrix’s advisers in this country.  

The Ruling
8.  I conclude that Affymetrix should pay to OGT their costs of and relating to the application to introduce fresh evidence, but not the costs of attending court when judgment was handed down in case number 2000/2749 to make submission on costs.  My reasons are as follows:
(1)  The evidence would not have been admitted.  Upon a proper construction of the licence agreement it was irrelevant.  
(2)  Affymetrix were aware of the existence of the first category of documents prior to the trial and could have obtained an order for inspection if they had sought one.  Thus with appropriate diligence the evidence produced by the documents could have been made available to the judge.  That was a substantial factor indicating refusal of admission as admission would probably have required the proceedings to be remitted back to the judge.  
(3)  The second category of documents are not of sufficient relevance as to be admitted in this Court.  
(4)  There was no need to attend Court to make submissions when judgment was handed down in case number 2000/2749 as the procedure adopted makes clear.  

9.  Counsel should agree and lodge within 14 days a minute so that the order can be drawn up.  

LORD JUSTICE BROOKE:
10.  I agree.

LORD JUSTICE SEDLEY:
11.  I also agree.