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Actavis v Eli Lilly: Supreme Developments

14 November 2017

We have already reported on the Supreme Court’s decision in Actavis v Eli Lilly (see here) which, as stated, is the most important decision in the last decade regarding patent infringement.  However, it did also raise many questions, particularly as it was a decision that only considered the issue of infringement, not validity.  It has generally been considered important that there is a balance between these two sides of patent law.  Further jurisprudence will be needed, perhaps with further cases going all the way to the Supreme Court, to clarify matters fully following what is a landmark shift for the UK into the “doctrine of equivalents” world.

Two decisions recently released have started the UK on the path to clarifying the state of patent law: (1) Generics (UK) (t/a Mylan) (2) Synthon v (1) Yeda Research and Development (2) Teva Pharmaceutical Industries [2017] EWHC 2629 (Pat) (“Mylan v Yeda”), a first instance decision of Mr Justice Arnold; and Actavis Group & Others v (1) ICOS (2) Eli Lilly & Company [2017] EWCA Civ 1671 (“Actavis v ICOS”), an appeal heard by the Lords Justices Lewison, Kitchin and Floyd.

The first issue that has been considered is whether “normal interpretation” has been affected by Actavis v Lilly.  This is because, as argued in Mylan v Yeda, there are many references in the Supreme Court’s judgment to the “literal meaning” of the claims.  Including in the re-cast Improver questions.  Such references might mean the general approach to interpretation set out in Kirin Amgen ([2004] UKHL 46) has been abandoned.  However, in both Mylan v Yeda and in Actavis v ICOS it was stated that the law on normal interpretation is unchanged by the Supreme Court (but note the point was agreed in the latter case so the Lord Justices were not assisted by argument on the point). 

What this means, at least for now following these two cases, is that the doctrine of equivalents acts as a layer on top of normal interpretation, without changing the purposive approach that is so familiar to patent law advisors.

The second issue that has been considered is whether there is no longer symmetry between the position on infringement and validity: that is, can a patent be novel over a reference that uses an equivalent/variant but the practicing of that reference (including the equivalent) would still infringe the patent under the principle in Actavis v Eli Lilly.  Put another way, does the Gillette defence still work as well as it did previously.

This point was considered, obiter, in Mylan v Yeda.  As Mr Justice Arnold noted it was previously settled law that a claim should be interpreted the same way for novelty and infringement.  Given the decision in Actavis v Eli Lilly in which Lord Neuberger did not refer to the law of novelty, it will ultimately require the Supreme Court to deal with the question.  Considering the issue briefly for the purposes of Mylan v Yeda (because the patent was invalid for obviousness), Mr Justice Arnold came to the conclusion that the law for novelty was now different to that of infringement.

Three reasons for this conclusion were given by counsel for the defendants and adopted by Mr Justice Arnold: (1) Synthon v SKB (the leading House of Lords case on novelty) does not consider equivalents so provides no guidance on the question; (2) the EPO practice is not to include equivalents when it considers novelty; and (3) Actavis v Eli Lilly is based on Art. 69 EPC and its Protocol which are concerned with scope of protection and the law of infringement, not novelty.   

Thus, in UK law there is now, at least on the first judicial consideration of the question, an imbalance in the law of infringement vis a vis novelty.    

It is also worth mentioning a panel event held by IBIL (part of University College London) which featured Lord Neuberger, Lord Sumption and former Lord Justice Jacob together with leading patent judges from the United States, Germany and the Netherlands.  All commenting on the effect of the Actavis v Eli Lilly decision. 

Given two of those responsible for the decision were in the panel and that most panel members were serving judges, comments was carefully couched.  However, it seems that the take-home message is that the rest of Europe welcomes the new English approach as a harmonizing measure; that the doctrine of equivalents in its various forms in at least Germany, the Netherlands and the US is not that widely used; and that it is usually reined in, particularly in the US, by doctrines that ensure, for example, that the imbalance suggested by Mylan v Yeda does not actually materialise. 

It will, therefore, be interesting to see how English precedent develops in order to mitigate any potential harmful effects of our new doctrine of equivalents.

Authors

Ian Turner

Ian Turner Managing Associate London (UK) Solicitor (UK)

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