Infringement Claims of Foreign Patents are Justiciable in English Courts

In Actavis Group hf v Eli Lilly & Company (USA)/Medis ehf v Eli Lilly & Company (USA) [2012] EWHC 3316 (Pat) (Actavis), the England and Wales High Court (Patents Court) (English Court) determined for the first time that it had jurisdiction to decide claims for infringement and declaratory relief regarding foreign patents. Actavis filed claims with the English Court seeking a declaration of non-infringement in respect of national patent designations based on European Patent No. 1,313,508 (‘508 Patent), assigned to Lilly. The ‘508 Patent covers cancer treatments employing the drug pemetrexed disodium, which Actavis alleges is not infringed by its proposed treatment using a different salt of the drug (pemetrexed dipotassium). Actavis sought declarations of non-infringement from the English Court not only for the UK designation – jurisdiction over which is not contentious - but also for the German, French, Italian and Spanish designations (Foreign Designations). Lilly did not dispute that the claims were fundamentally justiciable before the English Court, though this preliminary issue was novel in itself. Lilly conceded this issue in light of the recent case Lucasfilm Ltd v Ainsworth, [2011] UKSC 39 (Lucasfilm), in which the UK Supreme Court held that claims for infringement of foreign copyright were justiciable in English Courts. The Lucasfilm decision would likely extend to patents as well, given the observation in that case that “[t]here is no doubt that the modern trend is in favour of the enforcement of foreign intellectual property rights.” (para 109) [emphasis added] Instead, Lilly argued that the English Court should stay the proceedings on the grounds of forum non conveniens – a doctrine allowing a court to decline jurisdiction where there is a more convenient forum for the pursuit of the action and in the interests of the parties. Applying the established principles from Spiliada Maritime Corp v Cansulex Ltd, [1987] AC 460, the English Court declined to grant the stay since the French, German, Italian and Spanish courts were not clearly more appropriate as a forum. Specifically, Lilly failed to convince the English Court that the cost and inconvenience of an English Court’s making infringement determinations under five different domestic laws made it an inappropriate forum. The English Courts have become accustomed in recent years to applying the case law from other EU Member States in adjudicating intellectual property disputes. Though Actavis is a significant decision, its scope is limited to issues of infringement. Courts in the EU are subject to the jurisdictional rules set out in the Brussels I Regulation, which provides at Article 22(4) that exclusive jurisdiction over challenges to the validity of registered intellectual property rights is conferred on the courts of the States where they are registered. As a result, the conclusion in Actavis was only open to the English Court because Actavis did not challenge the validity of ‘508, and undertook to not challenge the validity of ‘508 if Lilly were to counterclaim for infringement (which it did not). ETIPS® will follow with further information if Lilly appeals the decision. Summary by: John Lucas