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Friday, 7 July 2017

BREAKING: Eli Lilly success as UK Supreme Court finds Actavis products directly and indirectly infringe pemetrexed patent

The Eli Lilly Kat experiencing that Friday feeling....
As reported on the IPKat (multiple times), the on-going saga between Eli Lilly and Actavis regarding Lilly's pemetrexed disodium product has kept the English courts busy for years.  The culmination of the litigation was heard back in April before the Supreme Court who was tasked with answering this question:
"Whether a new pemetrexed based cancer treatment produced by Actavis UK Limited and others infringes Eli Lilly and Company’s patent and its foreign designations either indirectly under s. 60(2) of the Patents Act 1977 (matter for appeal) or directly under a proper interpretation of Article 69 of the Europe Patent Convention 2000 (matter for cross-appeal)."
This morning the UK Supreme Court posted a summary of their decision as follows:
"The Supreme Court allows Eli Lilly's appeal and holds that Actavis' products directly infringe Eli Lilly's patent in the United Kingdom, France, Italy and Spain. The Court dismisses Actavis' cross-appeal on the basis that if its products did not directly infringe, they would indirectly infringe to the extent held by the Court of Appeal."
Full reasons will be handed down next Wednesday at 9:45AM (see here).

This is of course an interesting development in light of last week's (not yet reported) decision regarding Eli Lilly's unsuccessful application to prevent Actavis/Teva from launching its generic pemetrexed product in Spain.  They had undertaken to act in Spain in accordance with the outcome of the English litigation.  In light of those undertakings, it seems that Actavis/Teva's launch plans have been scuppered.

For a summary of the litigation see this IPKat report here.    

1 comment:

Anonymous said...

So, Lord Neuberger is "inclined to think that the examiner was wrong" in taking the view that the patent should be limited to pemetrexed disodium. However, the examiner does not specify the claims an applicant must file, either during drafting or prosecution. This was solely in the hands of the applicant. The examiner took the view that the claim to 'pemetrexed' was added matter, and rightly so. It is unfortunate that our Supreme court act in total disregard of established case law of the EPO. If the UK courts are so opposed to the strict law of added matter followed by the EPO, maybe they should not be so quick to follow the EPO's position in respect of novelty.

Whether, and to what extent, the courts should protect a patentee from its own incompetent drafting is a separate point as clearly equivalence doctrines exist. However, the present case leads to significant uncertainty in an area where claims can be defined in absolute clarity down to the atomic level. 'Sodium' means one thing only, whereas 'spring' is a functional definition open to interpretation. Even 'vertical' has a degree of error.

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