Actavis Uk Ltd and Others v Eli Lilly & Company

JurisdictionEngland & Wales
JudgeMr. Justice Arnold
Judgment Date27 November 2013
Neutral Citation[2013] EWHC 3749 (Pat)
CourtChancery Division (Patents Court)
Docket NumberCase No: HC 12 E02962 HP13 B04212 HP13 E04604
Date27 November 2013

[2013] EWHC 3749 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Royal Courts of Justice

The Rolls Building

7 Rolls Buildings

London EC4A 1NL

Before:

Mr. Justice Arnold

Case No: HC 12 E02962

HP13 A01487

HP13 B04212

HP13 E04604

Between:
(1) Actavis Uk Limited
(2) Actavis Group Ehf (formerly Actavis Group Hf)
(3) Actavis Group Ptc Ehf
(4) Medis Ehf
(5) Actavis Deutschland Gmbh & Co. Kg
(6) Medis Pharma Gmbh
(7) Medis Pharma France Sas
(8) Actavis France Sas
(9) Actavis Spain S.a.
(10) Actavis Italy Spa A Socio Unico
Claimants
and
Eli Lilly & Company
Defendant

Mr. Thomas Raphael and Ms. Isabel Jamal (instructed by Bird & Bird LLP) appeared for the Claimants.

Mr. Simon Thorley QC and Mr. Stuart Baran (instructed by Hogan Lovells International LLP) appeared for the Defendant.

Mr. Justice Arnold

Introduction

1

This is an application by the Defendant ("Lilly") for a stay of two claims referred to as the Fourth and Fifth Actions on the ground of alleged abuse of process.

2

The general background to the matter is set out in the judgment which I gave in two proceedings referred to as the First and Second Actions on 27 November 2012 ( [2012] EWHC 3316 (Pat)). In summary, pemetrexed is a cancer treatment which has been marketed by Lilly or its subsidiaries under the brand name Alimta since 2004. It was protected by a basic patent that has been extended by Supplementary Protection Certificates ("the SPCs") which will expire in December 2015. Lilly also owns European Patent No. 1 313 508 ("the Patent"), which will not expire until June 2021, for the use of pemetrexed disodium in combination with vitamin B12 or a pharmaceutical derivative thereof. The Claimants ("Actavis") contend that dealings in pemetrexed dipotassium, ditromethamine or diacid will not infringe the Patent. Lilly disputes this.

3

Actavis would like a resolution of this issue in good time for them to enter the market on expiry of the SPCs. Furthermore, Actavis would like the issue to be determined with respect to the French, German, Italian, Spanish and United Kingdom designations of the Patent, which cover the major pharmaceutical markets in Europe, in a single trial. Accordingly, Actavis have commenced a series of five actions in this country seeking declarations of non-infringement of each of those designations of the Patent.

Procedural chronology

4

On 12 July 2012 Actavis wrote to Lilly seeking an acknowledgement of non-infringement of the relevant designations of the Patent in respect of proposed dealings in pemetrexed dipotassium in France, Germany, Italy, Spain and the United Kingdom.

5

The First Action (HC 12 E 02962) was commenced by a claim form issued on 27 July 2012. The claim form was served on Lilly's solicitors on 1 August 2012. On 15 August 2012 Lilly acknowledged service indicating an intention to contest the jurisdiction of the court and subsequently it issued an application for that purpose.

6

On 29 August 2012 Actavis commenced the Second Action (HC 12 A 03340) by issuing a claim form and serving it on Lilly at the premises of Lilly's European Patent Department. On 26 September 2012 Lilly filed an acknowledgement of service again indicating an intention to contest jurisdiction and subsequently it issued an application for that purpose.

7

Lilly's two applications to contest jurisdiction came before me in November 2012. In the judgment to which I have already referred, I held that Lilly had consented to service of the claim form in the First Action and hence to the jurisdiction of this court. I also held, among other things, that the claim form in the Second Action had been validly served and that no stay should be granted on forum non conveniens grounds. As I set out in that judgment at [30], it was then common ground that the law applicable to the question of whether this court has power to grant declarations as to whether Actavis' proposed acts would infringe each of the foreign designations of the Patent was English law as the lex fori. As I shall explain, that has subsequently changed.

8

Upon giving judgment, I made a provisional order for directions for trial of the claims. The trial was subsequently fixed for 7 April 2014.

9

On 17 April 2013 Actavis issued the claim form in the Third Action (HP A 01487). In this action Actavis joined further Actavis companies to the proceedings in addition to those that had been joined to the First and Second Actions. In addition, they sought declarations of the non-infringement in respect of dealings in pemetrexed ditromethamine and diacid salts. On 1 May 2013 Lilly acknowledged service, again indicating an intention to contest the jurisdiction of the court.

10

On 21 May 2013 the Court of Appeal dismissed an appeal by Lilly from my order of 27 November 2012 ( [2013] EWCA Civ 515, [2013] RPC 37). Consequentially, the Court of Appeal made an order, as part of which Actavis consented to the dismissal of the Second Action, it being redundant in the light of the Court's resolution of the jurisdiction issue.

11

On 27 June 2013 I made a consent order dismissing Lilly's jurisdictional challenge to the Third Action and giving directions for the service of combined Particulars of Claim, Defence and Reply in the First and Third Actions and for the First and Third Actions to be tried together in the existing slot. Provision was also made for a further case management conference in due course.

12

On 18 July 2013 Lilly served its combined Defence in the First and Third Actions. In its Defence, Lilly contends, broadly speaking, that Actavis is not entitled to the declarations of non-infringement it seeks for two reasons. First, Lilly contends that Actavis have no locus standi to seek declaratory relief in respect of the French, German, Italian and Spanish designations of the Patent. As part of that case, Lilly contends, contrary to what it had conceded at the time of the hearing before me in November 2012, that the applicable law is not the lex fori, that is to say English law, but rather is the lex loci protectionis, that is to say the law of the relevant country.

13

Furthermore, Lilly relies upon certain procedural provisions, in particular of French law and Spanish law. Lilly contends that the effect of those procedural provisions is that a party in the position of Actavis cannot commence proceedings for a declaration of non-infringement until a certain period of time after requesting an acknowledgment of non-infringement. In the case of France, a three month period must elapse and, in the case of Spain, a one month period must elapse. The purpose of these provisions, so Lilly contends, is to give the patentee time in which to consider its position and, if it considers it appropriate, to commence infringement proceedings.

14

I should explain that, so far as this country is concerned, Lilly does not raise its first ground of objection to the claim, but instead it counterclaims for infringement.

15

The second main reason why Lilly says that Actavis are not entitled to a declaration of infringement is that each of the three salts in question fall within the relevant integer of the claims of the Patent when properly construed or by equivalence.

16

On 16 September 2013 Actavis sent a further so-called "taking position" letter to Lilly. One purpose of this letter was to lay the foundation for a contention by Actavis that if, (which Actavis dispute) Actavis had not met the relevant procedural requirements under, in particular, French and Spanish law, at the dates when the First and Third Actions were commenced, then they did so at a later point in time. Actavis contend that they can rely upon compliance with the relevant procedural requirements after commencement of those actions, but prior to trial. Lilly does not accept this.

17

On 18 September 2013 Actavis issued the claim form in the Fourth Action (HP13 BO4212). It also issued an application to amend its claim form in the First and Third Actions. The purpose of starting the Fourth Action, according to Actavis, was two-fold. First, it was in order to assist in overcoming Lilly's procedural arguments under foreign law and, secondly, to ensure that there was lis pendens from 18 September 2013 at the claim form level in respect of the dipotassium salt. Lilly subsequently acknowledged service in respect of the fourth claim form and did not contest jurisdiction.

18

On 30 September 2013 Actavis served their combined Reply in the First and Third Actions. In their Reply Actavis maintain that the applicable law is the lex fori, but that, in any event, they have complied with all relevant procedural requirements under the foreign laws.

19

On 17 October 2013 there was a case management conference...

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1 cases
  • Actavis UK Ltd and Others v Eli Lilly & Company
    • United Kingdom
    • Chancery Division (Patents Court)
    • 15 May 2014
    ...that the bringing of the later actions amounts to an abuse of the process of the court. In a judgment given on 27 November 2013 ( [2013] EWHC 3749 (Pat)) I dismissed an application by Lilly to strike out the fourth and fifth actions as an abuse of process, primarily on the ground that, for......

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