English High Court rejects UCB’s request for summary judgment
The English High Court has dismissed UCB Pharma’s request for summary judgment in a case against Chugai Pharmaceutical.
The decision was handed down on Friday, May 26.
Chugai sought a declaration against UCB, stating that it is not obliged to continue to pay royalties under a patent licence granted by UCB.
UCB granted a licence to Chugai for a portfolio of patents related to products containing a humanised antibody, tocilizumab, which is used in the treatment for rheumatoid arthritis.
Since January 2016, the only patent still in force to which the licence applies is US patent number 7,556,771.
According to Chugai, its tocilizumab product, which is marketed under the brand name Actemra in the US and RoActemra in Europe, falls outside of the scope of the claims of the patent.
UCB alleged that, although the proceedings brought by Chugai were framed as a claim for a declaration relating to a contract, a part of the proceedings concerned not only the scope but also the validity of the ‘771 patent.
“UCB submits that the validity of a US patent is non-justiciable, since the English court has no power to determine the validity of a foreign patent. Accordingly, it submits that those parts of Chugai's pleading which are said to raise issues of invalidity fall outside the subject matter jurisdiction of the English court,” said the Judge Henry Carr, on behalf of the High Court.
UCB said in its argument: “For present purposes UCB's application is limited to arguing that issues concerning the validity of a foreign patent are non-justiciable.”
The licence contained a clause where the parties submitted to the exclusive jurisdiction of England.
But UCB argued that the English court couldn’t hear a dispute concerning the validity of a foreign patent, since its “consideration would infringe the territorial limits of the court's jurisdictional powers and constitute an affront to comity”, under the principle in British South Africa v Moçambique.
It also claimed that the if the court were to hear the case, it would violate the foreign act of state doctrine, which “militates against this court determining issues that relate to the sovereign acts of a foreign state, which include the grant of a patent”.
The court considered UCB’s arguments but refused to decline jurisdiction, adding that the case is limited to a dispute about the scope of the claims of the ‘771 patent so that it doesn’t fall under Moçambique.
On the foreign act of state doctrine, Carr said: “It is not a breach of the principle of comity to exercise jurisdiction where the parties have chosen, by agreement, to submit their dispute to the adjudication of the English courts.”
For the following reasons, the judge concluded: “I dismiss UCB's applications to strike out the disputed paragraphs and for summary judgment in respect thereof. In my judgment, the English court has jurisdiction in respect of the issues raised by the disputed paragraphs.”
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