Eli Lilly And Co v Human Genome Sciences Inc

Eli Lilly And Co v Human Genome Sciences Inc

A functional definition in a patent claim can be sufficient for an active ingredient to be considered 'protected by a basic patent in force' under Article 3(a) of Regulation No 469/2009, provided the claims, interpreted in light of the description, relate implicitly but necessarily and specifically to the active ingredient. In this case, claim 13 of HGS’s patent relates to tabalumab in that manner, so tabalumab is protected by the patent for SPC purposes.

Parties
Claimant: Eli Lilly and Company; Defendant: Human Genome Sciences Inc.
Jurisdiction
England and Wales
Judgment Date
18 July 2014
Procedural Posture
Patent Dispute (declaratory Relief) / Judgment After Reference to CJEU
Outcome
Claim dismissed
Legal Topics
Supplementary Protection Certificate (spc), Interpretation of Article 3(a) Regulation No 469/2009, Extent of Patent Protection, Functional Vs Structural Patent Claims, Pharmaceutical Patents
Intellectual Property Law Patent Law European Union Law Supplementary Protection Certificate (spc) Interpretation of Article 3(a) Regulation No 469/2009 Extent of Patent Protection Functional Vs Structural Patent Claims Pharmaceutical Patents

Case Brief

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Parties

Eli Lilly and Company

Claimant

Human Genome Sciences Inc.

Defendant

Procedural Posture

Patent Dispute (declaratory Relief) / Judgment After Reference to CJEU

Legal Issues

  1. 1 Whether a product (tabalumab) is 'protected by a basic patent in force' under Article 3(a) of Regulation No 469/2009 when the patent claims are defined functionally rather than structurally
  2. 2 Whether a functional definition in a patent claim is sufficient for SPC purposes
  3. 3 Whether the patent must specifically identify the active ingredient for SPC eligibility

Ratio Decidendi

A functional definition in a patent claim can be sufficient for an active ingredient to be considered 'protected by a basic patent in force' under Article 3(a) of Regulation No 469/2009, provided the claims, interpreted in light of the description, relate implicitly but necessarily and specifically to the active ingredient. In this case, claim 13 of HGS’s patent relates to tabalumab in that manner, so tabalumab is protected by the patent for SPC purposes.

Court Disposition

Claim dismissed

Orders

  • Lilly’s application for a declaration is refused and dismissed.