Actavis & Ors v Eli Lilly And Company [2016] EWHC 1955 (Pat) (10 August 2016)

Actavis & Ors v Eli Lilly And Company [2016] EWHC 1955 (Pat) (10 August 2016)

The patents are invalid to the extent that claims are not entitled to priority and are anticipated by prior art (Anderson, Oren, Stoner) or are obvious over Daugan. Claims limited by pharmacokinetic properties and certain dosing features are not entitled to priority and lack novelty or are insufficient. The...

Source-derived case information.

Citation
[2016] EWHC 1955 (Pat)
Parties
Claimant: Actavis Group PTC EHF; Fourth Party: Actavis UK Ltd; Claimant: Actelion Pharmaceuticals Ltd; Fourth Party: Actelion Pharmaceuticals UK Limited; Claimant: Teva UK Limited; Claimant: Teva Pharmaceutical Industries Limited; Claimant: Generics (UK) Limited (trading as Mylan); Defendant: ICOS Corporation; Third Party: Eli Lilly and Company
Jurisdiction
England and Wales
Judgment Date
10 August 2016
Procedural Posture
Patent Infringement and Revocation Actions (multi Party, Consolidated) / First Instance Trial Judgment
Outcome
Claims of the 181 and 092 patents not entitled to priority are invalid for lack of novelty or obviousness; some claims found insufficient; no injunction granted; parties to submit on consequential relief.
Legal Topics
Patent Validity, Patent Infringement, Priority Entitlement, Added Matter, Novelty, Obviousness, Insufficiency, Claim Construction, Pharmaceutical Formulations, SPC Expiry
Intellectual Property Patents Pharmaceutical Law Patent Validity Patent Infringement Priority Entitlement Added Matter Novelty +5 more

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Summary, issues, holding and outcome

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Parties

Actavis Group PTC EHF

Claimant

Actavis UK Ltd

Fourth Party

Actelion Pharmaceuticals Ltd

Claimant

Actelion Pharmaceuticals UK Limited

Fourth Party

Teva UK Limited

Claimant

Teva Pharmaceutical Industries Limited

Claimant

Generics (UK) Limited (trading as Mylan)

Claimant

ICOS Corporation

Defendant

Eli Lilly and Company

Third Party

Procedural Posture

Patent Infringement and Revocation Actions (multi Party, Consolidated) / First Instance Trial Judgment

Legal Issues

  1. 1 Whether the relevant claims of EP (UK) 1,173,181 and EP (UK) 1,200,092 are valid (priority, added matter, novelty, obviousness, insufficiency)
  2. 2 Whether the claimants threaten to infringe the patents
  3. 3 Proper construction of claims (dose, particle size, pharmacokinetics)

Ratio Decidendi

The patents are invalid to the extent that claims are not entitled to priority and are anticipated by prior art (Anderson, Oren, Stoner) or are obvious over Daugan. Claims limited by pharmacokinetic properties and certain dosing features are not entitled to priority and lack novelty or are insufficient. The construction of claims regarding dose and particle size is resolved in favour of the claimants' interpretation where ambiguity exists. Infringement is not established for claims found invalid or not entitled to priority.

Court Disposition

Claims of the 181 and 092 patents not entitled to priority are invalid for lack of novelty or obviousness; some claims found insufficient; no injunction granted; parties to submit on consequential relief.

Orders

  • Relevant claims of EP (UK) 1,173,181 and EP (UK) 1,200,092 held invalid to the extent priority is not established and/or for insufficiency.
  • No injunction granted against claimants.