Actavis UK Ltd & Ors v Eli Lilly & Company

Actavis UK Ltd & Ors v Eli Lilly & Company

The Court of Appeal held that Actavis' proposed products do not directly infringe the 508 patent because the claims are limited to 'pemetrexed disodium' and the skilled person would not understand the claims to extend to other salts or forms. However, Actavis would indirectly infringe the patent under s.60(2) Patents Act 1977 (and corresponding foreign laws) because supplying their products for reconstitution in saline results in a solution containing pemetrexed ions and sodium ions, which falls within the claim as properly construed. The court further held that the conditions for declaratory relief (DNIs) are procedural and governed by English law (lex fori), not the law of the country...

Parties
Claimant/respondent: Actavis UK Limited and others; Defendant/appellant: Eli Lilly & Company
Jurisdiction
England and Wales
Judgment Date
25 June 2015
Procedural Posture
Civil Appeal (patents) / Court of Appeal Judgment on Appeal From Patents Court
Outcome
Appeal allowed; declarations of non-infringement set aside.
Legal Topics
Patent Infringement, Declaratory Relief, Construction of Claims, Indirect Infringement, Conflict of Laws
Intellectual Property Patents Patent Infringement Declaratory Relief Construction of Claims Indirect Infringement Conflict of Laws

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Parties

Actavis UK Limited and others

Claimant/respondent

Eli Lilly & Company

Defendant/appellant

Procedural Posture

Civil Appeal (patents) / Court of Appeal Judgment on Appeal From Patents Court

Legal Issues

  1. 1 Whether use of Actavis' alternative pemetrexed products infringes Eli Lilly's European Patent (UK) No. 1 313 508 directly or indirectly under English law and corresponding foreign laws (France, Italy, Spain)
  2. 2 Correct approach to construction of patent claims, including the role of equivalents and prosecution history
  3. 3 Whether English law or foreign law applies to the conditions for declaratory relief under Rome II Regulation

Ratio Decidendi

The Court of Appeal held that Actavis' proposed products do not directly infringe the 508 patent because the claims are limited to 'pemetrexed disodium' and the skilled person would not understand the claims to extend to other salts or forms. However, Actavis would indirectly infringe the patent under s.60(2) Patents Act 1977 (and corresponding foreign laws) because supplying their products for reconstitution in saline results in a solution containing pemetrexed ions and sodium ions, which falls within the claim as properly construed. The court further held that the conditions for declaratory relief (DNIs) are procedural and governed by English law (lex fori), not the law of the country...

Court Disposition

Appeal allowed; declarations of non-infringement set aside.

Orders

  • Declarations of non-infringement refused for UK, France, Italy, and Spain.
  • Issue of infringement by products recommended for reconstitution in dextrose remitted to Patents Court for determination if pursued.