The Court of Appeal handed down judgment in the major patent and private international law dispute, Actavis v Eli Lilly.
The case concerned whether Actavis is entitled to launch its pemetrexed drug products such a pemetrexed diacid or whether they are caught by Lilly’s patent which covers pemetrexed disodium.
Actavis took the novel course of claiming for negative declarations not only on the UK designation of the European patent but also on the French, Italian and Spanish designations. In previous judgments, Lilly’s jurisdiction challenges were dismissed.
The case rise to issues of patent law across Europe, including equivalence and indirect infringement. It also give rise to significant disputes of private international law, as Lilly argued in particular that the conditions for negative declaratory relief were governed by the lex causae not the lex fori.
Thomas Raphael QC argued the private international law side of the case for Actavis.
Actavis was largely successful on the patent law issues, winning on direct infringement, and being in substance successful on indirect infringement save where the products were reconstituted in saline.
Actavis also won on all the private international law issues: in what will be the lead judgment on this aspect of the new Rome II Regulation, the Court of Appeal concluded that the conditions for negative declaratory relief are procedural and governed by the lex fori under Rome II.
Thomas Raphael appeared for the respondents (instructed by Bird & Bird LLP)