In a dispute between Actavis and Eli Lilly, Mr Justice Arnold this week accepted Actavis’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 Ainsworth last 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 article analysing 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.
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