Actavis Group HF v Eli Lilly and Company; Medis EHF v Eli Lilly and Company,Patents Court, London, UK, 27 November 2012, Case Nos. HC12E02962 and HC12A03340
The UK Patents Court has held that the UK court can decide whether a declaration of non-infringement should be granted in respect of French, German, Italian and Spanish designations of a European Patent, where the UK designation is also in issue and the validity of the patents will not be called into question by the potential infringer.
Points of particular interest in this decision include:
- Lilly consented in correspondence to service of proceedings and this consent was held to apply to the proceedings concerning the non-UK patents as well as the UK one.
- Actavis (the potential infringer) had undertaken not to challenge validity, or to contend that the patent is invalid, at any stage of the proceedings if the UK court accepted jurisdiction. (One of the Actavis group companies was in fact a party to an EPO opposition of the Patent and Arnold J noted that the Actavis group had therefore voluntarily bifurcated the infringement and validity aspects of the case.)
- Arnold J applied the decision in Lucasfilm v Ainsworth (that claims for foreign copyright infringement were justiciable in the UK) in deciding that the UK court was the appropriate forum in this instance. He relied on the Supreme Court’s comments in that case – that there was a modern trend in favour of enforcement of foreign intellectual property rights (where validity wasn’t challenged) and that the Rome II Regulation actually envisaged litigation of foreign intellectual property rights. The Supreme Court had also found that there were no policy issues against such enforcement in copyright.
- It was noted that all of the designated countries had signed the CPC and had implemented its relevant articles. Lilly had adduced no evidence that the relevant UK provisions differed in any way material to those in the other jurisdictions on the question of finding infringement.
- Furthermore, Lilly had not provided convincing evidence that any of the courts would approach Article 69 EPC and the Protocol differently in assessing the scope of the Patent’s protection. (In any event, such evidence was seen as weak in a forum non conveniens argument.)
- Lilly’s forum non conveniens argument was raised in response to certain methods of service of the claim in the UK. The judge ultimately decided that it was advantageous for the UK Court to hear all five claims by reason of the likely costs savings, the UK Court’s increasing propensity to decide on foreign law, and the EU patent judiciary’s increased striving for consistency. Such an approach would also avoid inconsistent decisions across the EU jurisdictions. A small additional factor in favour of making the UK the appropriate forum was that Lilly’s European Patent Operations Department was located there.
The case also contains some interesting points on valid service in the UK. In particular:
- It appears that there are circumstances where a Claimant parent company can serve a claim on the lawyers of a Defendant who has consented to service in correspondence with one of the Claimant’s subsidiaries only.
- The case considers and applies the UK law for determining whether a company is operating a place of business in the UK, on which service of proceedings can then be made.
Read the judgment (in English) here.
Head note: John de Rohan-Truba and Graham Burnett-Hall