Eli Lilly And Company v Genentech, Inc

Eli Lilly And Company v Genentech, Inc

Issue estoppel applies to all issues fundamental to the prior judgment in the 822 Action, including findings of obviousness and insufficiency at the priority date, barring Genentech from relitigating those issues in respect of the 084 Patent. However, Genentech is not estopped from arguing plausibility at the filing date for proposed claims 10 and 11, as this was not fully litigated previously and new evidence establishes an arguable case.

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 / Summary Judgment and Preliminary Issue Trial
Outcome
Summary judgment granted in part; claims 1-9 of the 084 Patent held invalid; summary judgment refused for proposed claims 10 and 11.
Legal Topics
Issue Estoppel, Abuse of Process, Patent Validity, Obviousness, Plausibility, Amendment of Patent Claims
Intellectual Property Patent Law Issue Estoppel Abuse of Process Patent Validity Obviousness Plausibility Amendment of Patent Claims

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 14 Party arguments 2 Amounts and remedies 3
Sign in to unlock

Parties

Eli Lilly and Company

Claimant

Genentech, Inc

Defendant

Eli Lilly and Company Limited

Part 20 Defendant

Procedural Posture

Patent Revocation and Infringement / Summary Judgment and Preliminary Issue Trial

Legal Issues

  1. 1 Whether issue estoppel and Henderson v Henderson abuse of process bar Genentech from relitigating issues decided in the 822 Action regarding the validity of the 084 Patent
  2. 2 Whether claims 1-9 of the 084 Patent are invalid for obviousness and insufficiency as previously determined
  3. 3 Whether Genentech can argue plausibility at the filing date for claims 10 and 11

Ratio Decidendi

Issue estoppel applies to all issues fundamental to the prior judgment in the 822 Action, including findings of obviousness and insufficiency at the priority date, barring Genentech from relitigating those issues in respect of the 084 Patent. However, Genentech is not estopped from arguing plausibility at the filing date for proposed claims 10 and 11, as this was not fully litigated previously and new evidence establishes an arguable case.

Court Disposition

Summary judgment granted in part; claims 1-9 of the 084 Patent held invalid; summary judgment refused for proposed claims 10 and 11.

Orders

  • Claims 1-9 of European Patent (UK) No 2784084 and claim 9 as proposed are declared invalid.
  • Genentech estopped from arguing plausibility at the priority date for proposed claims 10 and 11.