Chugai Pharmaceutical Co Ltd v UCB Pharma SA [2017] EWHC 1216 (Pat) (26 May 2017)

Chugai Pharmaceutical Co Ltd v UCB Pharma SA [2017] EWHC 1216 (Pat) (26 May 2017)

The English court has jurisdiction to determine the issues raised by the disputed paragraphs because the claim is contractual, concerns the scope of the US patent under a licence governed by English law, and does not seek to invalidate the patent. References to validity are incidental and do not render the dispute non-justiciable. The act of state doctrine and the rule in Moçambique do not preclude the court from adjudicating these issues where the parties have agreed to English jurisdiction.

Citation
[2017] EWHC 1216 (Pat)
Parties
Claimant/respondent: Chugai Pharmaceutical Co. Ltd; First Defendant/applicant: UCB Pharma S.A.; Second Defendant/applicant: Celltech R&D Limited; Defendant/respondent: UCB Biopharma SPRL
Jurisdiction
England and Wales
Judgment Date
26 May 2017
Procedural Posture
Patent Contractual Dispute (application to Strike Out/summarily Dismiss Parts of Pleading) / Interlocutory Application (strike Out/summary Judgment)
Outcome
Application dismissed
Legal Topics
Patent Licence Interpretation, Jurisdiction Over Foreign Patents, Justiciability, Act of State Doctrine, Rule in Moçambique, Declaratory Relief, Scope of Patent Claims, Royalty Obligations
Intellectual Property Contract Law Conflict of Laws Patent Licence Interpretation Jurisdiction Over Foreign Patents Justiciability Act of State Doctrine Rule in Moçambique +3 more

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Parties

Chugai Pharmaceutical Co. Ltd

Claimant/respondent

UCB Pharma S.A.

First Defendant/applicant

Celltech R&D Limited

Second Defendant/applicant

UCB Biopharma SPRL

Defendant/respondent

Procedural Posture

Patent Contractual Dispute (application to Strike Out/summarily Dismiss Parts of Pleading) / Interlocutory Application (strike Out/summary Judgment)

Legal Issues

  1. 1 Whether the English court has jurisdiction to determine issues relating to the scope of a US patent under a licence agreement governed by English law
  2. 2 Whether references to US patent validity in support of claim construction render the dispute non-justiciable in England
  3. 3 Whether the act of state doctrine or the rule in Moçambique preclude the English court from adjudicating the disputed paragraphs

Ratio Decidendi

The English court has jurisdiction to determine the issues raised by the disputed paragraphs because the claim is contractual, concerns the scope of the US patent under a licence governed by English law, and does not seek to invalidate the patent. References to validity are incidental and do not render the dispute non-justiciable. The act of state doctrine and the rule in Moçambique do not preclude the court from adjudicating these issues where the parties have agreed to English jurisdiction.

Court Disposition

Application dismissed

Orders

  • UCB's applications to strike out the disputed paragraphs and for summary judgment are dismissed.