Eli Lilly & Company v Human Genome Sciences, Inc [2012] EWCA Civ 1185 (05 September 2012)

Eli Lilly & Company v Human Genome Sciences, Inc [2012] EWCA Civ 1185 (05 September 2012)

Claim 13 is sufficient because all antibodies binding to neutrokine-a can be made without undue effort, and the claim does not require a limitation to 'useful' antibodies. The amendment to claim 13 did not extend protection. Claims 18 and 19 are sufficient because they claim products that can be made as pharmaceutical or diagnostic compositions, regardless of whether a specific use is identified in the patent.

Citation
[2012] EWCA Civ 1185
Parties
Respondent/claimant: ELI LILLY AND COMPANY; Appellant/defendant: HUMAN GENOME SCIENCES, INC
Jurisdiction
England and Wales
Judgment Date
05 September 2012
Procedural Posture
Patent Appeal / Court of Appeal (civil Division) on Remittal From Supreme Court
Outcome
HGS' appeal allowed; Lilly's appeal dismissed.
Legal Topics
Patent Sufficiency, Industrial Applicability, Claim Construction, Extension of Protection by Amendment
Intellectual Property Patent Law Patent Sufficiency Industrial Applicability Claim Construction Extension of Protection by Amendment

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 4 Authorities cited 15 Party arguments 2
Sign in to unlock

Parties

ELI LILLY AND COMPANY

Respondent/claimant

HUMAN GENOME SCIENCES, INC

Appellant/defendant

Procedural Posture

Patent Appeal / Court of Appeal (civil Division) on Remittal From Supreme Court

Legal Issues

  1. 1 Whether claim 13 is insufficient for lack of enablement or extended by amendment
  2. 2 Whether claims 18 and 19 are insufficient for lack of enablement

Ratio Decidendi

Claim 13 is sufficient because all antibodies binding to neutrokine-a can be made without undue effort, and the claim does not require a limitation to 'useful' antibodies. The amendment to claim 13 did not extend protection. Claims 18 and 19 are sufficient because they claim products that can be made as pharmaceutical or diagnostic compositions, regardless of whether a specific use is identified in the patent.

Court Disposition

HGS' appeal allowed; Lilly's appeal dismissed.

Orders

  • Claim 13 held sufficient and not extended by amendment.
  • Claims 18 and 19 held sufficient.