Eli Lilly & Co & Ors v Genentech Inc

Eli Lilly & Co & Ors v Genentech Inc

The English court has jurisdiction to hear the Related Claims for declarations of non-infringement of foreign designations of EP 822 because the claims arise out of the same or closely connected facts as the UK claim, satisfying the service out gateway. The proceedings, as presently constituted, are not concerned with the validity of the foreign patents and do not engage Article 24(4) of Brussels I (recast). There is no basis for a stay on forum non-conveniens grounds. Genentech's application is dismissed, subject to costs if validity is later put in issue.

Parties
Claimant: Eli Lilly & Co.; Claimant: Lilly France SAS.; Claimant: Eli Lilly Deutschland GmbH; Claimant: Eli Lilly Italia SpA; Claimant: Eli Lilly and Co (Ireland) Limited; Claimant: Eli Lilly Kinsale Limited; Claimant: Lilly SA; Claimant: Eli Lilly and Company Limited; Defendant: Genentech Inc.
Jurisdiction
England and Wales
Judgment Date
06 December 2017
Procedural Posture
Jurisdiction Application (civil, Patents) / Ruling on Application to Set Aside Service/stay Proceedings
Outcome
Application to set aside service/stay proceedings dismissed (jurisdiction upheld, subject to costs if validity later in issue)
Legal Topics
Jurisdiction, Patents, Declarations of Non Infringement, Forum Non Conveniens, Brussels I Regulation, Service Out of Jurisdiction
Intellectual Property Civil Procedure Jurisdiction Patents Declarations of Non Infringement Forum Non Conveniens Brussels I Regulation Service Out of Jurisdiction

Case Brief

Summary, issues, holding and outcome

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Parties

Eli Lilly & Co.

Claimant

Lilly France SAS.

Claimant

Eli Lilly Deutschland GmbH

Claimant

Eli Lilly Italia SpA

Claimant

Eli Lilly and Co (Ireland) Limited

Claimant

Eli Lilly Kinsale Limited

Claimant

Lilly SA

Claimant

Eli Lilly and Company Limited

Claimant

Genentech Inc.

Defendant

Procedural Posture

Jurisdiction Application (civil, Patents) / Ruling on Application to Set Aside Service/stay Proceedings

Legal Issues

  1. 1 Whether the English court has jurisdiction to hear claims for declarations of non-infringement (DNIs) relating to foreign designations of a European patent (EP 822) against a foreign-domiciled defendant (Genentech)
  2. 2 Whether the claims fall within the CPR PD6B para 3.1(4A) gateway for service out of the jurisdiction
  3. 3 Whether Article 24(4) of Brussels I (recast) Regulation is engaged (exclusive jurisdiction over validity of foreign patents)

Ratio Decidendi

The English court has jurisdiction to hear the Related Claims for declarations of non-infringement of foreign designations of EP 822 because the claims arise out of the same or closely connected facts as the UK claim, satisfying the service out gateway. The proceedings, as presently constituted, are not concerned with the validity of the foreign patents and do not engage Article 24(4) of Brussels I (recast). There is no basis for a stay on forum non-conveniens grounds. Genentech's application is dismissed, subject to costs if validity is later put in issue.

Court Disposition

Application to set aside service/stay proceedings dismissed (jurisdiction upheld, subject to costs if validity later in issue)

Orders

  • Genentech's application to set aside service or stay proceedings is dismissed.
  • If validity of the foreign patents is put in issue in response to a counterclaim for infringement, costs may be awarded against Lilly.