Xcelom Ltd v BGI-Hongkong Co Ltd (No. 1)
Court of First Instance
High Court Action No. 3089 of 2015
Deputy Judge Kenneth Kwok SC in Chambers
22 September 2016

Injunctions – interlocutory injunction – infringement of biotechnology-related patent – whether plaintiff would suffer serious and irreparable damage if injunction not granted – inordinate delay

P1–2 issued a writ on 28 December 2015 together with a summons for an injunction which sought to restrain D1–2 from using or offering for use in Hong Kong a non-invasive prenatal test for screening chromosomal aneuploidies. P2 was the registered proprietor of the NIPT Patent granted in Hong Kong in 2014. P2 granted to P1 an exclusive licence to exploit the NIPT Patent and related technology in Hong Kong in July 2014. D2 provided non-invasive prenatal testing services in Hong Kong under the name of “NIFTY” which could achieve results identical to P1–2’s NIPT technology. On 17 and 18 January 2015, D1–2 advertised the NIFTY process in a promotional flyer distributed during a conference attended by many doctors in the field of obstetrics and gynaecology. In or around January and February 2015, D1–2 offered the NIFTY process to various private doctors and hospitals. D1–2 continued their advertising activities and test at various times in 2015.

Held, dismissing Ps’ injunctive application:

  • The delay by P1–2 in commencing legal proceedings against D1–2 of more than 11 months was substantial. P1–2 did not explain the delay which was inordinate. Instead of moving with due diligence to seek an injunction forthwith, they took almost a year to issue proceedings which was not characteristic of persons suffering irreparable damage. There was clear evidence of lack of irreparable damage. Absent irreparable damage, that was normally fatal to Ps’ application.
  • The strength of the plaintiff’s case was not relevant at this stage beyond whether there was a serious issue to be tried. It was no part of the court’s function at the interlocutory stage to try to resolve conflicts of evidence on affidavit as to facts on which the claims of either party might ultimately depend, nor to decide difficult questions of law which called for detailed argument and mature considerations, which were matters to be dealt with at the trial.
Jurisdictions: 

Thomson Reuters – Sweet & Maxwell are the publishers of the Authorised Hong Kong Law Reports & Digest ("HKLRD") and the Authorised Hong Kong Court of Final Appeal Reports ("HKCFAR"), and providers of Westlaw HK (www.sweetandmaxwell.com.hk / www.westlaw.com.hk).