Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555 (25 June 2015)

Actavis UK Ltd & Ors v Eli Lilly & Company [2015] EWCA Civ 555 (25 June 2015)

The claims of the 508 patent are limited to 'pemetrexed disodium' and do not extend to other salts or forms such as pemetrexed diacid, dipotassium, or ditromethamine. The skilled team includes both an oncologist and a chemist, and the chemist could not predict without testing that the variants would have no material effect on the way the invention works. Therefore, Actavis' proposed products do not infringe the 508 patent under English law or the corresponding foreign laws. The prosecution history does not justify a broader construction. English law applies to the procedural conditions for declaratory relief under Rome II, and Actavis satisfied those conditions.

Citation
[2015] EWCA Civ 555
Parties
Claimants/respondents: Actavis UK Limited and others; Defendant/appellant: Eli Lilly & Company
Jurisdiction
England and Wales
Judgment Date
25 June 2015
Procedural Posture
Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (patents Court)
Outcome
Appeal dismissed; declarations of non-infringement upheld.
Legal Topics
Patent Claim Construction, Doctrine of Equivalents, Direct and Indirect Infringement, Declaratory Relief (non Infringement), Jurisdiction and Applicable Law (rome Ii)
Intellectual Property Law Patent Law Patent Claim Construction Doctrine of Equivalents Direct and Indirect Infringement Declaratory Relief (non Infringement) Jurisdiction and Applicable Law (rome Ii)

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Parties

Actavis UK Limited and others

Claimants/respondents

Eli Lilly & Company

Defendant/appellant

Procedural Posture

Appeal (civil) / Court of Appeal Judgment on Appeal From High Court (patents Court)

Legal Issues

  1. 1 Whether use of Actavis' proposed products (pemetrexed diacid, dipotassium, ditromethamine) would infringe Lilly's European Patent (UK) No. 1 313 508 under English law and corresponding foreign laws
  2. 2 Correct approach to construction of patent claims under EPC 2000, including role of equivalents and prosecution history
  3. 3 Whether English law or foreign law applies to conditions for declaratory relief (DNIs) under Rome II Regulation

Ratio Decidendi

The claims of the 508 patent are limited to 'pemetrexed disodium' and do not extend to other salts or forms such as pemetrexed diacid, dipotassium, or ditromethamine. The skilled team includes both an oncologist and a chemist, and the chemist could not predict without testing that the variants would have no material effect on the way the invention works. Therefore, Actavis' proposed products do not infringe the 508 patent under English law or the corresponding foreign laws. The prosecution history does not justify a broader construction. English law applies to the procedural conditions for declaratory relief under Rome II, and Actavis satisfied those conditions.

Court Disposition

Appeal dismissed; declarations of non-infringement upheld.

Orders

  • Declarations of non-infringement granted in respect of UK, French, Italian, and Spanish designations of the 508 patent.