Eli Lilly claims another victory in Taltz patent battle
The English High Court has invalidated key claims of a patent owned by Roche subsidiary Genentech, following a lawsuit filed by US rival Eli Lilly.
Genentech had argued that Eli Lilly’s autoimmune drug Taltz (ixekizumab) infringed the patent.
The decision was issued by deputy High Court judge Roger Wyand last Friday, February 14.
The patent at issue in the case was European Patent (UK) No. 2784084 B, a divisional of another Genentech patent (1641822), which had already been invalidated by both the English court and the European Patent Office (EPO).
Justice Richard Arnold of the English High Court had previously invalidated the parent ‘822 patent in March 2019, as part of a separate action brought by Eli Lilly.
In that judgment, Arnold remarked that the case had been “one of the most complex patent cases I have ever tried”.
Total legal costs between the parties spiralled to £11 million during the ‘822 patent case.
After successfully having the parent ‘822 patent invalidated, Eli Lilly then sought to knock out the divisional ‘084 patent at the English High Court but without another expensive and lengthy trial “exploring exactly the same issues”.
Recognising that the ‘084 patent and the already-invalidated ‘822 patent were “virtually identical”, deputy High Court judge Wyand barred Genentech from arguing that claims 1-9 of the ‘084 patent were valid on the grounds of issue estoppel.
German proceedings
According to Eli Lilly, the stakes were particularly high because of parallel proceedings ongoing at the Düsseldorf Regional Court over the German designations of the two European patents.
Because the EPO invalidated the ‘822 patent on a Europe-wide level last month, Eli Lilly faces no threat of an injunction under that patent in Germany, one of its most important markets for Taltz.
But, under German legal practice, Eli Lilly cannot seek revocation of the ‘084 patent in Germany because EPO proceedings concerning that patent have not yet concluded.
Eli Lilly, therefore, asked the English court to revoke the ‘084 patent in light of its previous ruling on the “virtually identical” ‘822 patent, which would set a precedent for the Düsseldorf court to follow.
Wyand subsequently ruled that Genentech was estopped from arguing that claims 1-9 of the ‘084 patent were valid, but allowed an application to amend claims 10 and 11 of the patent to stand.
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