Fujifilm Kyowa Biologics Co Ltd v Abbvie Biotechnology Ltd (Rev 1) [2016] EWHC 425 (Pat) (01 March 2016)

Fujifilm Kyowa Biologics Co Ltd v Abbvie Biotechnology Ltd (Rev 1) [2016] EWHC 425 (Pat) (01 March 2016)

The UK Patents Court has jurisdiction to grant a declaration that the claimant's biosimilar product would have been obvious or anticipated at the priority date of the relevant AbbVie patents and divisionals, as such relief is not barred by section 74 of the Patents Act 1977 and serves a useful commercial purpose in...

Source-derived case information.

Citation
[2016] EWHC 425 (Pat)
Parties
Claimant: FUJIFILM KYOWA BIOLOGICS CO., LTD.; Defendant: ABBVIE BIOTECHNOLOGY LIMITED
Jurisdiction
England and Wales
Judgment Date
01 March 2016
Procedural Posture
Patent Litigation / Interlocutory Applications (application to Amend Claim and Strike Out)
Outcome
Application to strike out dismissed; application to amend claim allowed
Legal Topics
Declaratory Relief, Patent Validity, Jurisdiction of UK Courts Over European Patents, Arrow Declarations, Patent Infringement, Revocation Proceedings
Intellectual Property Patents Declaratory Relief Patent Validity Jurisdiction of UK Courts Over European Patents Arrow Declarations Patent Infringement Revocation Proceedings

Source-derived case record

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 16 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

FUJIFILM KYOWA BIOLOGICS CO., LTD.

Claimant

ABBVIE BIOTECHNOLOGY LIMITED

Defendant

Procedural Posture

Patent Litigation / Interlocutory Applications (application to Amend Claim and Strike Out)

Legal Issues

  1. 1 Whether the UK court has jurisdiction to grant a declaration that the claimant's biosimilar product would have been obvious or anticipated at the priority date of certain AbbVie patents and divisionals (Arrow declaration)
  2. 2 Whether such a declaration is barred by section 74 of the Patents Act 1977
  3. 3 Whether the declaration sought would serve a useful commercial purpose

Ratio Decidendi

The UK Patents Court has jurisdiction to grant a declaration that the claimant's biosimilar product would have been obvious or anticipated at the priority date of the relevant AbbVie patents and divisionals, as such relief is not barred by section 74 of the Patents Act 1977 and serves a useful commercial purpose in clearing the way for product launch. The declaration sought is sufficiently defined, relates only to the claimant's own product, and does not usurp the EPO's function. The circumstances are sufficiently unusual to justify the exercise of discretion to allow the claim to proceed.

Court Disposition

Application to strike out dismissed; application to amend claim allowed

Orders

  • AbbVie's application to strike out the claim for declaratory relief is dismissed
  • FKB's application to amend the Claim Form and Particulars of Claim is allowed in the form currently pursued