Eli Lilly v Actavis UK Ltd and Others: SC 12 Jul 2017

The issue raised on this appeal and cross-appeal is whether three products manufactured by Actavis would infringe a patent whose proprietor is Lilly, namely European Patent (UK) No 1 313 508, and its corresponding designations in France, Italy and Spain.
Held: Eli Lilly’s appeal succeeded. The Actavis products directly infringed the respondent’s patents. The Court would: ‘(i) allow Lilly’s appeal in direct infringement and hold that the Actavis products infringe the Patent in the United Kingdom, and also in France, Italy and Spain, (ii) dismiss Actavis’s 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.’
Lord Neuberger said: ‘Any patent system must strike a balance between the two competing factors referred to at the end of article 1 of the Protocol, namely ‘a fair protection for the patent proprietor [and] a reasonable degree of legal certainty for third parties’. The balance cannot be struck on an ad hoc case-by-case basis without any guiding principles, as that would mean that there was no legal certainty. On the other hand, striking the balance by adopting a normal approach to interpretation would risk depriving patentees of a proper measure of protection’
‘notwithstanding what Lord Diplock said in Catnic [1982] RPC 183, 242, a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial? If the answer to either issue is ‘yes’, there is an infringement; otherwise, there is not. Such an approach complies with article 2 of the Protocol, as issue (ii) squarely raises the principle of equivalents, but limits its ambit to those variants which contain immaterial variations from the invention.’
Lord Neuberger reformulated the three Improver questions as follows:
‘1 Notwithstanding that it is not within the literal meaning of the relevant claim(s) of the patent, does the variant achieve substantially the same result in substantially the same way as the invention, ie the inventive concept revealed by the patent?
2 Would it be obvious to the person skilled in the art, reading the patent at the priority date, but knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

Lord Neuberger, Lord Mance, Lord Clarke, Lord Sumption, Lord Hodge
[2017] UKSC 48, [2017] RPC 21, [2017] Bus LR 1731, UKSC 2015/0197
Bailii, Bailii Summary, SC, SC Summary, SC Videos Summary, SC 170404 am Video, SC 170404 pm Video, SC 170405am Video, SC 170405pm Video, SC 170406am Video, SC 170406pm Video
Patents Act 1977 60(1)
England and Wales
At First InstanceActavis UK Ltd and Others v Eli Lilly and Company PatC 15-May-2014
The defendants owned a cancer treatment drugs patent which had been extended. The various claimants wished to introduce a generic version, and sought a declaration of invalidity of the patent.
Held: None of the Actavis products would directly . .
Appeal fromActavis UK Ltd and Others v Eli Lilly and Company CA 25-Jun-2015
Lilly appealed against a finding that an Actavis drug had not infringed its patents to the limited extent of holding that there would be indirect infringement in four jurisdictions, but they agreed with the Judge that there would be no direct . .
See AlsoActavis UK Ltd and Others v Eli Lilly and Company PatC 12-Nov-2015
application by Actavis for judgment on admissions seeking a declaration. . .
CitedRanbaxy (Uk) Ltd v Astrazeneca Ab PatC 15-Jul-2011
Ranbaxy, an importer of generic pharmaceuticals, sought a declaration of non infringement and revocation of EP 1 020 461 owned by AstraZeneca. AstraZeneca counterclaimed for infringement.
Kitchin J discussed the prohibition from patentability . .
LeaveActavis UK Ltd and Others v Eli Lilly and Company CA 30-Jun-2015
Consideration of
i) The form of order for costs of the trial and the appeal;
ii) What should happen to the interim payment made by Lilly in the court below, and whether there should be an interim payment of any costs awarded under . .
CitedCatnic Components Ltd and Another v Hill and Smith Ltd HL 1982
The plaintiffs had been established as market leaders with their patented construction, had ample production capacity and stocks, but had never granted any licence under their patent. The patent was for a novel type of galvanised steel lintel, which . .
ReformulatedImprover Corporation v Remington Consumer Products Ltd ChD 1989
Protocol Tests For Onbviousness Set Out
The invention was based upon the discovery that an arcuate rod with slits, when rotated at high speed, would take the hair off the skin by means of the opening and closing of the slits. The claim was to a rod in the form of an ‘helical spring’ but . .
CitedWheatley and Another v Drillsafe Ltd and Others CA 5-Jul-2000
Appeal against declaration of patent invalidity. . .
CitedSchutz (UK) Ltd v Werit (UK) Ltd SC 13-Mar-2013
The parties disputed whether there had been an infringement of the claimant’s patent in respect for ‘intermediate bulk containers’ designed for the safe transport of liquids in bulk. They were a cage holding a plastic bottle. The defendant had a . .
CitedKirin-Amgen Inc and others v Hoechst Marion Roussel Limited and others etc HL 21-Oct-2004
The claims arose in connection with the validity and alleged infringement of a European Patent on erythropoietin (‘EPO’).
Held: ‘Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance . .
CitedGraver Tank and Manufacturing Co Inc v Linde Air Products Co 29-May-1950
(United States Supreme Court) Jackson J discussed the doctrine of equivalents so as to prevent ‘the unscrupulous copyist [from making] unimportant and insubstantial changes and substitutions in the patent which, though adding nothing, would be . .
CitedWalton v Potter and Horsfall 18-Nov-1841
Tindal CJ told the jury that they had to decide whether the defendant’s product was ‘perfectly distinct’ from the patented product, or whether it varied ‘only in certain circumstances, which are not material to the principle and substance of the . .
CitedClark v Adie HL 1877
The court should look to the ‘pith and marrow’ of the invention to see whether a patent infringement had occurred. For a claim be made for a ‘subordinate’ invention, it would have been necessary distinctly to claim it in the patent. . .
CitedBeecham Group Ltd v Bristol Laboratories Ltd HL 1977
An allegation was made of infringement of a patent on ambicillin. The ‘pith and marrow’ approach resulted in the marketing of hetacillin, which was a reproduction of the substance ampicillin, albeit temporarily masked, constituting an infringement . .
CitedNorton Healthcare Limited v Beecham Group Plc CA 19-Jun-1997
. .

Cited by:
CitedActavis Group Ptc EHF and Others v Icos Corporation and Another SC 27-Mar-2019
The court considered: ‘the application of the test of obviousness under section 3 of the Patents Act 1977 to a dosage patent. In summary, a patent, whose validity is not challenged, identified a compound as an efficacious treatment but did not . .

Lists of cited by and citing cases may be incomplete.

Intellectual Property

Updated: 23 January 2022; Ref: scu.589260