07/12/2017
JUDGMENT: Eli Lilly & Co and Ors v Genetech Inc
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In this case Eli Lilly & Co (“Lilly”), together with a number of associated companies, successfully resisted a jurisdiction challenge advanced by Genentech Inc.
Lilly sought declarations of non-infringement (“DNIs”) in relation to UK, French, Spanish, Irish, Italian and German designations of a patent owned by Genentech for the drug ixekizumab (a monoclonal antibody used in the treatment of psoriasis). Additionally, in relation to the UK designation of the patent only, Lilly sought an order revoking the patent. There was no jurisdiction dispute concerning the UK designation.
Lilly relied upon the accessory service gateway in PD6B §3.1(4A) to found the Court’s jurisdiction over the non-UK DNI claims, arguing that the claims in relation to the non-UK DNIs arose out of the same or closely connected facts as the UK patent DNI claim.
Genentech challenged the Court’s jurisdiction, arguing that PD6B §3.1(4A) was not engaged, that the English Court was in any event required to cede jurisdiction by reason of Article 24(4) of Brussels 1 (Recast) Regulation, and that the English Court was not the appropriate forum for the hearing of Lilly’s claims for the DNI’s in relation to the non-UK designations of the patents.
Birss J held that PD6B §3.1(4A) was engaged in this case, providing some helpful guidance as to how this relatively new CPR provision should be interpreted. The Judge also held that Article 24(4) of Brussels 1 (Recast) was not engaged in this case as Lilly’s claims for DNIs in relation to the non-UK European designations of the patent in issue did not put the validity of those patents in issue.
This case is one of a series (in most of which members of 20 Essex Street have also acted) through which the English Courts have been delineating the divide between claims which put into issue the validity of a foreign registered intellectual property right (in particular patents), and those which do not (ie. those which are restricted to questions of the infringement, or scope, of such rights: see Actavis v. Lilly [2012] EWHC 3316 (Pat); Anan Kasei v. Molycorp [2016] EWHC 1722 (Pat) Fujifilm v Abbvie [2016] EWHC 2204 (Pat); and Chugai Pharmaceutical Co v UCB Pharma et al [2017] EWHC 1216 (Pat).
Alexander Layton QC and Oliver Caplin, instructed by Allen & Overy LLP, acted for the successful claimant (Eli Lilly & Co); David Lewis QC and Michael Ashcroft QC, instructed by Marks & Clerk represented Genentech Inc.
The Judgment can be viewed below.
