Eli Lilly And Company v Genentech, Inc [2020] EWHC 261 (Pat) (14 February 2020)

Eli Lilly And Company v Genentech, Inc [2020] EWHC 261 (Pat) (14 February 2020)

Issue estoppel applies to prevent Genentech from relitigating the issues of obviousness and insufficiency decided in the 822 Action, as the issues are identical, fundamental, and between the same parties. The possibility of injustice to Genentech is outweighed by the public interest in finality and avoiding duplicative litigation. However, Genentech is not barred by abuse of process from arguing plausibility at the filing date, as the court finds it would not be unjust to allow this argument, given the circumstances of its exclusion in the earlier proceedings.

Citation
[2020] EWHC 261 (Pat)
Parties
Claimant: Eli Lilly and Company; Defendant: Genentech, Inc; Part 20 Defendant: Eli Lilly and Company Limited
Jurisdiction
England and Wales
Judgment Date
14 February 2020
Procedural Posture
Patent Revocation and Infringement / Trial of Preliminary Issue and Summary Judgment Application
Outcome
Summary judgment granted in favour of Lilly on the issues subject to issue estoppel; Genentech precluded from relitigating those issues. Genentech permitted to argue plausibility at the filing date.
Legal Topics
Issue Estoppel, Abuse of Process, Patent Obviousness, Patent Sufficiency, Res Judicata
Intellectual Property Patent Law Issue Estoppel Abuse of Process Patent Obviousness Patent Sufficiency Res Judicata

Case Brief

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Parties

Eli Lilly and Company

Claimant

Genentech, Inc

Defendant

Eli Lilly and Company Limited

Part 20 Defendant

Procedural Posture

Patent Revocation and Infringement / Trial of Preliminary Issue and Summary Judgment Application

Legal Issues

  1. 1 Whether issue estoppel applies to prevent Genentech from relitigating issues decided in the 822 Action regarding the validity of the 084 Patent
  2. 2 Whether Genentech is precluded by Henderson v Henderson abuse of process from raising plausibility at the filing date
  3. 3 Whether the claims of the 084 Patent are invalid for the same reasons as the 822 Patent

Ratio Decidendi

Issue estoppel applies to prevent Genentech from relitigating the issues of obviousness and insufficiency decided in the 822 Action, as the issues are identical, fundamental, and between the same parties. The possibility of injustice to Genentech is outweighed by the public interest in finality and avoiding duplicative litigation. However, Genentech is not barred by abuse of process from arguing plausibility at the filing date, as the court finds it would not be unjust to allow this argument, given the circumstances of its exclusion in the earlier proceedings.

Court Disposition

Summary judgment granted in favour of Lilly on the issues subject to issue estoppel; Genentech precluded from relitigating those issues. Genentech permitted to argue plausibility at the filing date.

Orders

  • Genentech estopped from challenging the findings of obviousness and insufficiency as determined in the 822 Action in respect of the 084 Patent.
  • Genentech permitted to advance argument on plausibility at the filing date.