English court sides with Eli Lilly in Genentech jurisdictional clash

The English High Court has sided with Eli Lilly in holding that its UK-related claims in a patent case can be heard together with its European-based arguments in the UK.

The dispute concerned national designations of Genentech’s European patent number EP 1,641,822, called “IL-17A/F heterologous polypeptides and therapeutic uses thereof”.

IL17, or interleukin 17 (referred to in the patent as IL17A), is a human cytokine, a protein which plays an important role in the human immune system.

The invention described in EP 822 is based on the “discovery of a new cytokine which the patent calls IL17A/F”.

Eli Lilly sells Taltz (ixekizumba), a monoclonal antibody which has a centralised European marketing authorisation to treat a form of the disease psoriasis. Taltz is described by Eli Lilly as an anti-IL17 antibody.

A number of other companies challenged the patent before the European Patent Office (EPO), but Eli Lilly is not a party to those proceedings.

The EPO’s Opposition Division held that the patent is invalid, because the main request and three auxiliary requests involve added matter contrary to article 123(2) of the European Patent Convention. The decision is now under appeal.

Eli Lilly stated that Taltz does not infringe the patent, so it brought proceedings in the UK.

The first part of Eli Lilly’s proceedings, a claim for a declaration of non-infringement and a claim for revocation of the UK patent, posed no problem as the English court had jurisdiction to hear and determine the claims.

However, the second part of the proceedings consists of claims for declarations of non-infringement (and scope) in relation to the five national designations of EP 822 in France, Germany, Spain, Italy and Ireland. There were no claims for revocation or invalidity made about these five designations.

Genentech applied to set aside service of the proceedings in the UK insofar as they include the five related claims or for a stay on jurisdiction grounds.

Genentech provided three arguments.

First, that the claims can’t be brought within one of the “gateways” for service outside of the jurisdiction, so service should be set aside.

“Gateways” for service cover the circumstances in which English proceedings can be served on non-EU domiciled defendants who have no presence in England and Wales.

Second, that the proceedings are concerned with the validity of the non-UK patents and so engage article 24(4) of the Brussels I (recast) Regulation 1215/2012.

Genentech claimed that the courts of the member state in which the patent is registered have exclusive jurisdiction over validity.

Third, that England is not the proper forum for these claims under ‘forum non-conveniens’, a common-law legal doctrine where courts can refuse to hear matters if there is a more appropriate forum available.

“Although it does not matter, I believe article 24(4) is Genentech’s best point, as was indicated by their approach to arguing the issues,” said Mr Justice Birss.

Birss found that Eli Lilly had demonstrated that the gateway was applicable.

“In the sense that each related claim is based on a legally different patent and involves (slightly) different applicable law, I find that the claimants have much the better argument that gateway (4A) is applicable to the related claims.”

On the article 24(4) ground, the question is whether these proceedings are “concerned with” the validity of the non-UK patents.

Birss said that if it was not for the “unusual features” of the case, he would have no hesitation in finding that, in all probability, Genentech would counterclaim for infringement of the non-UK patents and Eli Lilly would raise validity in response.

“However I am satisfied that these unusual circumstances mean that it would not be fair to pre-empt what each party may decide to do. There are sufficient uncertainties that the right thing to do is wait and see what happens,” concluded Birss.

But, in Birss’s view, any wait would present a cost risk to Eli Lilly, adding that if validity is brought into the dispute, then it is “very likely that Lilly should bear the whole costs of this application even if they win it in its form today”.

On the third argument, Birss said that trying the related claims together with the issues relating to the UK patent is in the interests of both parties for the purposes of “securing the ends of justice”.

Genentech’s applications were dismissed.

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