UK judge to rule on foreign patent infringement
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

UK judge to rule on foreign patent infringement

A judge sitting in the High Court in London has said he can rule on whether patents in France, Germany, Italy and Spain are infringed in a single trial in the UK

In a dispute between Actavis and Eli Lilly, Mr Justice Arnold this week acceptedActavis’s submission that there were good reasons to hear all the related infringement cases in the England & Wales court.

[I]n my judgment Lilly has not shown that the courts of France, Germany, Italy and Spain are the appropriate fora for the trial of Actavis’ claims in relation to the French, German, Italian and Spanish designations of the Patent. Certainly I do not consider that it has shown that those courts are clearly or distinctly more appropriate than this Court. Accordingly, I would decline to grant a stay of those claims on the grounds of forum non conveniens,” said the judge.

The dispute concerns the national designations of Eli Lilly’s European patent 1 313 508 for the use of pemetrexed disodium. Actavis seeks a declaration that it can produce pemetrexed dipotassium without infringing the patents .

Eli Lilly sells its version of the drug as a cancer treatment using the brand Alimta.

The opportunity for courts to rule on the infringement of foreign IP rights was opened up by the UK Supreme Court’s copyright decision in Lucasfilm v Ainsworthlast year. Arnold argued in his judgment that patent rights should essentially be treated the same as copyright.

According to Lucasfilm, UK courts cannot rule on the validity of foreign IP rights.

In this case, Actavis deliberately did not ask the court to rule on the (in)validity of the patent. However, it is a party to opposition proceedings at the EPO in which the validity is challenged. As Arnold said parenthetically: “In effect, therefore, the Actavis group has voluntarily bifurcated the infringement and validity aspects of its case with respect to the Patent .”

Bifurcation of validity and infringement proceedings is common in Germany, but not in the UK and is in fact criticised by many UK practitioners.

Actavis is represented by Bird & Bird, Richard Meade QC and Thomas Raphael and Eli Lilly by Hogan Lovells, Stephen Phillips QC and Thomas Mitcheson. Bird & Bird has published an articleanalysing the ruling.

Eli Lilly is expected to appeal the decision to the Court of Appeal. If the decision is upheld, the judge will have to hear evidence and then rule on whether the various patents are infringed by Actavis’s proposed activities. The company wants to enter the market by the end of 2015.

more from across site and ros bottom lb

More from across our site

The firm was among multiple winners at a record-breaking 2024 ceremony held in London on April 11
We provide a rundown of Managing IP’s news and analysis from the week, and review what’s been happening elsewhere in IP
The Americas research cycle has commenced. Do not miss this opportunity to nominate your work!
Increased and new patent fees could affect prosecution strategies for law firms and companies, according to sources
Five former Oblon lawyers felt that joining Merchant & Gould would help them offer the right prices to entice clients
The UK may not be a UPC member but its firms are still acting in proceedings, with Carpmaels among the most prominent
Naomi Pearce of Pearce IP shares how she is helping her firm become a life sciences leader and how generous policies have helped attract top talent
The Court of Appeal has dismissed an appeal filed by Ocado, in what was a key test for transparency at the new court
Each week Managing IP speaks to a different IP lawyer or professional about their life and career
INTA is calling out ‘immoral’ unregistered attendees at the association’s annual meeting, but the debate is more nuanced
Gift this article