Eli Lilly & Company v Human Genome Sciences, Inc

Eli Lilly & Company v Human Genome Sciences, Inc

Claim 13 is sufficient because all antibodies binding to neutrokine-α can be made without undue effort and the claim does not require a limitation to 'useful' antibodies; the amendment to claim 13 does not extend protection as it does not change the scope of the claim; claims 18 and 19 are sufficient as they claim products that can be made, not specific uses, and the adjectives 'pharmaceutical' and 'diagnostic' do not impose a requirement for immediate practical utility.

Parties
Appellant/defendant: ELI LILLY AND COMPANY; Respondent/claimant: HUMAN GENOME SCIENCES, INC
Jurisdiction
England and Wales
Judgment Date
05 September 2012
Procedural Posture
Civil Appeal / Court of Appeal Judgment Following Supreme Court Remittal
Outcome
Lilly's appeal dismissed; HGS's appeal allowed.
Legal Topics
Patent Sufficiency, Industrial Applicability, Claim Construction, Patent Amendment, Technical Contribution
Intellectual Property Patent Law Patent Sufficiency Industrial Applicability Claim Construction Patent Amendment Technical Contribution

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 5 Authorities cited 15 Party arguments 2
Sign in to unlock

Parties

ELI LILLY AND COMPANY

Appellant/defendant

HUMAN GENOME SCIENCES, INC

Respondent/claimant

Procedural Posture

Civil Appeal / Court of Appeal Judgment Following Supreme Court Remittal

Legal Issues

  1. 1 Whether claim 13 is insufficient for lack of technical contribution or undue effort
  2. 2 Whether amendment to claim 13 extends protection
  3. 3 Whether claims 18 and 19 are insufficient for lack of disclosure of practical use

Ratio Decidendi

Claim 13 is sufficient because all antibodies binding to neutrokine-α can be made without undue effort and the claim does not require a limitation to 'useful' antibodies; the amendment to claim 13 does not extend protection as it does not change the scope of the claim; claims 18 and 19 are sufficient as they claim products that can be made, not specific uses, and the adjectives 'pharmaceutical' and 'diagnostic' do not impose a requirement for immediate practical utility.

Court Disposition

Lilly's appeal dismissed; HGS's appeal allowed.

Orders

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