Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd & Anor

Fujifilm Kyowa Kirin Biologics Co, Ltd v Abbvie Biotechnology Ltd & Anor

Arrow declarations (declarations that a product, process, or use was old or obvious at a particular date) are not precluded by section 74 of the Patents Act 1977 or the scheme of the EPC, provided they do not amount to a disguised attack on the validity of a granted patent. The court has discretion to grant such declarations where justified, particularly where statutory remedies are unavailable or being frustrated. The claim for an injunction to restrain threats or proceedings for patent infringement is arguable and should not be struck out at this stage. The claim against AbbVie UK should also not be struck out as there is an arguable basis for relief against it.

Parties
Claimant/respondent: Fujifilm Kyowa Kirin Biologics Co., Ltd.; Defendant/appellant: AbbVie Biotechnology Limited; Defendant/appellant: AbbVie Limited
Jurisdiction
England and Wales
Judgment Date
12 January 2017
Procedural Posture
Civil Appeal (patents) / Appeal From High Court (patents Court) Decisions Declining to Strike Out Claims for Arrow Declarations and Related Injunctions
Outcome
Appeals dismissed
Legal Topics
Arrow Declarations, Patent Validity, Declaratory Relief, Patent Infringement, Divisional Applications, Jurisdiction of National Courts, Gillette Defence
Intellectual Property Patents Arrow Declarations Patent Validity Declaratory Relief Patent Infringement Divisional Applications Jurisdiction of National Courts +1 more

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Parties

Fujifilm Kyowa Kirin Biologics Co., Ltd.

Claimant/respondent

AbbVie Biotechnology Limited

Defendant/appellant

AbbVie Limited

Defendant/appellant

Procedural Posture

Civil Appeal (patents) / Appeal From High Court (patents Court) Decisions Declining to Strike Out Claims for Arrow Declarations and Related Injunctions

Legal Issues

  1. 1 Whether the English court can grant Arrow declarations (declarations that a product/process/use was old or obvious at a particular date) in the context of pending or potential divisional patent applications
  2. 2 Whether such declarations are precluded by section 74 of the Patents Act 1977 or the scheme of the EPC
  3. 3 Whether a claim for an injunction to restrain threats or proceedings for patent infringement in respect of acts covered by the declaration is arguable

Ratio Decidendi

Arrow declarations (declarations that a product, process, or use was old or obvious at a particular date) are not precluded by section 74 of the Patents Act 1977 or the scheme of the EPC, provided they do not amount to a disguised attack on the validity of a granted patent. The court has discretion to grant such declarations where justified, particularly where statutory remedies are unavailable or being frustrated. The claim for an injunction to restrain threats or proceedings for patent infringement is arguable and should not be struck out at this stage. The claim against AbbVie UK should also not be struck out as there is an arguable basis for relief against it.

Court Disposition

Appeals dismissed

Orders

  • Appeals by AbbVie Biotechnology Limited and AbbVie Limited dismissed
  • Claims for Arrow declarations and related injunctions not struck out