12 July 2017
Authored and Edited by Hazel Ford, Ph.D.; Martin D. Hyden
The UK Supreme Court has handed down its judgment at the conclusion of a long-running dispute between Eli Lilly and Actavis. The cases related to Eli Lilly’s patent, which claims the use of the drug pemetrexed disodium in combination with vitamin B12 in the treatment of cancer. Actavis sought declarations of non-infringement for its proposed products which used pemetrexed diacid, pemetrexed ditromethamine or pemetrexed dipotassium in place of pemetrexed disodium.
The UK Supreme Court concluded that, although there was no literal infringement based on the strict wording of the claim, Actavis’ products would infringe because they were immaterial variants of the claimed invention. The Court found that Actavis’ products worked in the same way as the claimed invention and achieved substantially the same result.
Although the reference to pemetrexed disodium was added to the claim as an amendment during prosecution, it was not found to place a strict limitation on the scope of the claim as granted. The Court noted that: “the reason why the claims were limited to the disodium salt was because that was the only pemetrexed salt on which experiments described in the specification had been carried out. However, it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims”.
The Court found that it was: “…very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium … from the scope of protection”.
The Court concluded that Actavis’ products directly infringed Eli Lilly’s patent. This may offer some hope to patentees who are forced to make amendments under the often-strict requirements of the EPO. As this decision filters through to the lower courts in the UK, this may also promote the use of the UK courts as a patentee-friendly option for patent enforcement in Europe.
A further interesting point arising from this decision is that the UK Supreme Court found infringement not only in the UK, but also of the same EPO-derived patent in France, Italy and Spain. This may be an unusual case since only infringement, and not validity of the patent, was at issue, and it is understood that the parties had not objected to the UK courts seizing jurisdiction for other European countries. However, this does show that it is already possible to address infringement across multiple European countries in a single action, even without the Unified Patent Court (UPC) in force at this time.
claim amendments, claim construction, claim drafting, Doctrine of Equivalents, infringement, United Kingdom (UK)
Copyright © 2017 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Webinar
May 9, 2024
Webinar
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.