From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Wednesday, 23 March 2016

BREAKING: UK Supreme Court to hear Actavis v Lilly pemetrexed battle

This morning the Supreme Court published its list of cases that it will be hearing (or not) on appeal.  Among the list are two parties that are frequent users of the English judicial system - Eli Lilly and Actavis.

For longer than probably either parties' lawyers care to remember, the two have been at war over Lilly's pemetrexed disodium product - a chemotherapeutic treatment for lung cancer marketed under the brand name Alimita - and Actavis' proposed product (which has taken various forms over the years).   The case first started back in July 2012 when Actavis sought declarations for non-infringement in respect of the French, German, Italian, Spanish and UK designations of Lilly's patent in respect of their dipotassium version of the product (then later diacid and ditromethamine).

Before getting to the Supreme Court the subject matter of the case has been subject to at least five decisions (two of which will be subject to the scrutiny of the Supreme Court):

Dispute about the jurisdiction of DNIs
  • November 2012:  Mr Justice Arnold said he had jurisdiction to hear DNIs with respect of the foreign designations of the Lilly patent (see decision here and AdvoKat summary here)
  • May 2013:  A Court of Appeal consisting of Lord Justices Kitchin, Lloyd and Longmore upheld Mr Justice Arnold  (see decision here)
Decision on whether Actavis's proposed product would infringe
  • May 2014:  Mr Justice Arnold held that Actavis' proposed dealings would not amount to direct or indirect infringement (Justice Arnold in 2014  (see decision here and IPKat summary here)
  • June 2015:  A Court of Appeal consisting of Lord Justices Kitchin, Floyd and Longmore upheld Arnold J's decision in respect of direct infringement, but reversed the indirect infringement finding on the basis that if the products were reconstituted/diluted the saline solution would contain sodium ions in a ratio of at least 2:1. This would fall within the claims and thus the supply of Actavis's products would amount to indirect infringement (see decision here and IPKat summary here
The dextrose remission point

  • February 2016:  The case also saw a recent decision from Mr Justice Arnold on a point that was remitted from the Court of Appeal.  The issue was whether the supply of Actavis' products would constitute indirect infringement of Lilly's patent if marketed with instructions to reconstitute and/or dilute the products with 5% dextrose solution instead of saline.  Mr Justice Arnold held it was not foreseeable that Actavis's product would be diluted with saline.  The AmeriKat has not heard if the decision has been appealed to the Court of Appeal, but imagines it is likely (see decision here and AmeriKat summary here)

What's up for grabs in the Supreme Court?  

With both parties getting permission (see the table), the issue of direct and indirect infringement subject to the June 2015 Court of Appeal decision is up for grabs.  How and what else the parties argue before the Supreme Court remains a source of debate.

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