13 July 2017
Reporter: Mark Dugdale

UK Supreme Court tweaks equivalent infringement

The UK Supreme Court’s ruling in Actavis v Eli Lilly put more emphasis on considering the invention in the patent when assessing whether a competitor infringes, according to Hogan Lovells.

The decision also brought UK law more closely into line with the law in other key European countries, said Emma Fulton, one of the Hogan Lovells lawyers representing Eli Lilly in the litigation, following the release of the UK’s full judgement yesterday.

The UK Supreme Court upheld the validity of and adjudged as infringed Eli Lilly’s vitamin regimen patent for Alimta earlier this week.

With the launch of a generic version of Alimta, Teva Pharmaceuticals-owned Actavis would also, in the absence of direct infringement, indirectly infringe Eli Lilly’s patent for the the safe and efficacious use of a cancer drug, pemetrexed, in co-therapy with vitamin B12.

“Although the case arose in the context of pharmaceutical technology, it applies across the range of patented technologies,” explained Stephen Bennett, a Hogan Lovells partner who worked on the case. “This is good news for patent owners who want to catch infringers that make small changes to their products to try to avoid infringement.”

In updating the test for equivalent infringement, the UK Supreme Court reformulated the 1990 Improver Corporation v Remington Consumer questions to make it clear that the informed/skilled person knows that the variant works (to the extent that it actually does work) when they are considering whether it would be obvious that the variant achieves the same result in the same way, according to Hogan Lovells.

The questions that courts will now consider when looking at variants are:

  • Does the variant achieve substantially the same result in substantially the same way as the invention, ie, the inventive concept revealed by the patent?

  • Would it be obvious to an informed reader, knowing that the variant achieves substantially the same result as the invention, that it does so in substantially the same way as the invention?

  • Would such a reader of the patent have concluded that the patent owner nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?

    Dan Brook of Hogan Lovells said: “Importantly, the decision makes it clear that assessing the scope of protection of a patent is a two stage process: first work out what the patent claim means; and then consider whether any variant infringes by equivalence.”

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