Eli Lilly And Company & Ors v Genentech, Inc [2019] EWHC 387 (Pat) (01 March 2019)

Eli Lilly And Company & Ors v Genentech, Inc [2019] EWHC 387 (Pat) (01 March 2019)

The patent was found invalid for lack of inventive step (obviousness) over the prior art and for insufficiency in relation to the psoriasis claims. The amendments proposed by Genentech were not allowable as they introduced added matter and/or extended the scope of protection. There was no infringement by Lilly's ixekizumab as the patent was invalid.

Citation
[2019] EWHC 387 (Pat)
Parties
Claimant: Eli Lilly and Company; Claimant: Lilly France SAS; Claimant: 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
01 March 2019
Procedural Posture
Patent Revocation and Infringement / High Court Trial Judgment
Outcome
Patent revoked; counterclaim for infringement dismissed; amendment applications refused.
Legal Topics
Patent Validity, Obviousness, Novelty, Insufficiency, Infringement, Amendment of Patents
Intellectual Property Patents Patent Validity Obviousness Novelty Insufficiency Infringement Amendment of Patents

Case Brief

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Parties

Eli Lilly and Company

Claimant

Lilly France SAS

Claimant

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

Patent Revocation and Infringement / High Court Trial Judgment

Legal Issues

  1. 1 Whether Genentech's European Patent (UK) No. 1 641 822 is invalid for lack of novelty, obviousness, or insufficiency
  2. 2 Whether Lilly's product ixekizumab infringes the patent
  3. 3 Whether Genentech's proposed amendments introduce added matter, extend protection, or lack clarity

Ratio Decidendi

The patent was found invalid for lack of inventive step (obviousness) over the prior art and for insufficiency in relation to the psoriasis claims. The amendments proposed by Genentech were not allowable as they introduced added matter and/or extended the scope of protection. There was no infringement by Lilly's ixekizumab as the patent was invalid.

Court Disposition

Patent revoked; counterclaim for infringement dismissed; amendment applications refused.

Orders

  • European Patent (UK) No. 1 641 822 revoked in its entirety.
  • Genentech's counterclaim for infringement dismissed.