July 31, 2019

Facts

Sequenom Inc, the second claimant, is the proprietor of a European Patent (UK) entitled “Non-invasive detection of foetal genetic traits”.  Illumina Inc, the first claimant, had been an exclusive licensee of the patent since at least 11 January 2019.  The third defendant, Ariosa Diagnostics Inc had developed a non-invasive prenatal test called the Harmony Test.  The first defendant, TDL Genetics Ltd, offered the Harmony Test to patients, and used it.

Illumina and Sequenom alleged that TDL had infringed the patent and that Ariosa was jointly liable for any infringement by TDL. TDL and Ariosa disputed the claim and counterclaimed for revocation of the patent on two grounds including, obviousness over a conference abstract, known as “Ikeda”, published in Japanese before the 55^th Annual Congress of the Japanese Society of Obstetrics and Gynaecology, which took place in Japan in April 2003. The abstract was entitled: “Frequency at which foetal DNA is present in maternal plasma: Difference by fragment length”.

The parties agreed on how the document should be translated into English, save for one point. The original Japanese version of Ikeda contained a word, consisting of two characters, また, or mata, which had not been translated in the English translation. Illumina and Sequenom contended that mata should be translated as “Furthermore” or “Moreover”.  TDL and Ariosa contended that the translation was correct as it stood, and that no English word was required to translate mata.

Decision

Mr Justice Arnold found that the patent was valid and infringed.

As for the translation issue over the Ikeda document, the parties agreed that what mattered was how the original Japanese version of the document would be understood. However, Arnold J was “doubtful” that this was correct, since the skilled person was located in the UK (Generics (UK) Ltd v Warner-Lambert Co LLC [2015] EWHC 2548 (Pat)) and was deemed to read Ikeda in English translation.  However, he said, even if it was the meaning of the Japanese that was determinative, an English court had to rely on a translation in order to appreciate that meaning in any event. Either way, it was important that the translation should be as accurate as possible.

Arnold J also noted that a translation was a form of expert evidence (Sobrinho v Impresa Publishing SA [2015] EWHC 3542 (QB)). Therefore, the court’s permission was required to adduce such evidence under CPR Part 35. Whilst it was common for a translation that was agreed to be adduced without any formal court permission, if there was a dispute, permission must be sought and obtained, he said.

As for certifying the accuracy of translations, Arnold J said that the certificate should be in the name of, and signed by, the translator who did the translation, as it was, in effect, a form of expert report.  A certificate signed only by a manager of a translation agency that employed the translator was not acceptable.  Further, where there was any dispute over the translation, then the report absolutely had to comply with CPR Part 35, Practice Direction 35 in terms of form and content.

The claimants’ expert was a native English speaker who had been Emeritus Professor of Japanese Studies at the University of Cambridge since 2014. The defendants’ expert was a native Japanese speaker and a science professor at the University of Oxford. He was educated in Japan and studied English as a second language.

Both parties argued that their expert was better placed to assist the court, but Arnold J found that it was helpful to have evidence from both the perspectives of a native Japanese speaker and a Japanese linguist.

The experts agreed that mata could be used as a noun, an adverb or a conjunction, that its meaning depended on how it was used and that in Ikeda it was used as a conjunction at the start of a sentence.

The claimants’ expert said that when mata was used as a conjunction at the start of the second of two sentences, its function was to signify a positive connection between the first and second sentences as opposed to a contrast. In his opinion it was wrong not to translate mata, since to do so did not convey the full meaning of the original Japanese. He explained that when used as a conjunction, mata was used to indicate items that were either additional (“furthermore” or “moreover”) or parallel (“likewise” or “similarly”).

The defendants’ expert said that, even when used as a conjunction, mata was ambiguous and its meaning was highly dependent on context. He accepted that it could be used to imply a positive connection between two sentences, but said that it was often used as a filler or linking word, which did not imply any positive connection between the two sentences, but simply an additional fact. His opinion was that, in the context of Ikeda, it was better not to translate the word. In the alternative, he considered that “also” or “in addition” would be an accurate translation.

Although both experts made reference to dictionaries, in Arnold J’s view these did not assist because the question was contextual. Similarly, although examples were produced of abstracts and other documents in which mata had been translated in various ways (or not at all), they were unhelpful since they merely generated further disputes as to the competence of the translators and the accuracy of those translations. In any event, the question was contextual.

Arnold J noted that Ikeda was an abstract. The parties agreed that it was probable that the authors were subject to a character limit (equivalent to a word limit in English). Therefore, Arnold J said, it was unlikely that they would have wasted two characters by including a word that was redundant. Consequently, it was not appropriate to leave mata untranslated. Further, while he accepted that it was not always strictly necessary to translate mata, even in an abstract, he also accepted the claimants’ evidence that fidelity to the original generally required it to be translated. Considering the evidence as whole, he concluded that the most accurate rendition was “in addition”.  (Illumina Inc v TDL Genetics Ltd [2019] EWHC 1497 (Pat) (17 June 2019) — to read the judgment in full, click here).