In an unusual move, the UK Supreme Court (UKSC) has given its key conclusions in the long running Actavis v Eli Lilly case ahead of giving the full judgment. The UKSC allowed Eli Lilly’s appeal and held that Actavis’ products directly infringe Lilly’s patent in the United Kingdom, France, Italy and Spain.

The full judgment will be handed down by the UKSC at 9.45am on Wednesday, 12 July.

The UKSC’s decision on direct infringement overturns the earlier High Court and Court of Appeal decisions which had held that Actavis’ products did not directly infringe Lilly’s patent.

The Court also dismissed Actavis’ cross-appeal and upheld the Court of Appeal’s decision that Actavis’ products would, in the absence of direct infringement, indirectly infringe Lilly’s patent.

Partner Daniel Brook said:

“This conclusion vindicates Lilly’s position after five years of hard-fought litigation and we look forward to receiving the reasoned judgment next week. We are delighted at the outcome for our client.”

Background to the case

Lilly’s patent concerns the safe and efficacious use of a cancer drug, pemetrexed, in co-therapy with vitamin B12. Actavis’ proposed products differed only in relation to the salt form of pemetrexed. Actavis sought declarations of non-infringement in relation to the UK, French, German, Italian and Spanish patents in the UK courts.

Actavis removed the German patent from the UK litigation in 2014 after the Düsseldorf Court found that it would be infringed by Actavis. In the UK High Court, Mr Justice Arnold held that the remaining patents were not infringed and granted declarations of non-infringement to Actavis.

On appeal, the Court of Appeal refused to grant the declarations sought by Actavis on the grounds that Actavis’ proposed products would indirectly infringe Lilly’s patent. However, the Court of Appeal found that the patent would not be directly infringed.

As well as overturning the Court of Appeal’s decision on direct infringement, the Supreme Court has upheld the Court of Appeal’s decision on indirect infringement – that is Actavis’ appeal was unsuccessful.

The Hogan Lovells IP team was led by London partners Daniel Brook and Stephen Bennett, with London lawyer Emma Fulton with support from our French and Italian patents teams and Clifford Chance’s Madrid patent team.