Patentee-Friendly Claim Construction in the UK Courts?

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.