Eli Lilly and Company v Genentech

 Eli Lilly and Company v Genentech

High Court applies issue estoppel and maltreatment of interaction to legitimacy of divisional patent 

This choice is the latest improvement in a more extensive debate among Genentech and Eli Lilly. The contest began in 2017 when Lilly tried to repudiate Genentech's European Patent No. 1641822 (the "822 Patent") named "IL-17A/F heterologous peptides and remedial uses thereof". It additionally looked for a presentation of non-encroachment for its blockbuster psoriasis drug Taltz®. 

This judgment chose Lilly's application for outline judgment for the repudiation of Genentech's European Patent No. 2784084 B (the "084 Patent"), a divisional of the 822 Patent. 


Taltz® contains Lilly's restrictive enemy of IL-17A/F counter acting agent ixekizumab, the consequence of free innovative work by Lilly. While Genentech possesses a group of licenses asserting the utilization of IL-17A/F for the treatment of psoriasis, it doesn't have an item identified with either the 822 or 084 Patent. 

In the procedures concerning the 822 Patent (the "822 Action"), Arnold J (as he at that point was), renounced the 822 Patent for conspicuousness. Applying the standards in Warner-Lambert v Actavis [2018] UKSC 56, he likewise held that the cases identifying with the utilization of IL-17A/F for the treatment of psoriasis needed credibility at the need date. During the 822 Action, Genentech made an application to change the date at which believability was to be surveyed to the documenting date considering advancements in the CGK. Arnold J rejected the application for case the board reasons on the premise that the application was made excessively near the preliminary date. 

While Arnold J allowed Genentech authorization to request, the 822 Patent was in the meantime at long last renounced by the EPO for added matter (a case dismissed by Arnold J in the High Court procedures), with the impact that the UK assignment of the 822 Patent was considered never to have existed and Genentech's allure fell away. 

Genentech hence welcomed a new case against Lilly based on its divisional 084 Patent (the "084 Action"). It was concurred that for the reasons for the suit, there was no material distinction between the cases of the 822 Patent (as looked to be corrected) and the 084 Patent (as tried to be altered). Lilly counterclaimed that this contradicted the standard of res judicata; that a similar issue ought not be chosen twice. 

Genentech, then again, contended that it had been allowed leave to request in the 822 Action, and thusly had a sensible possibility of achievement. To deny it the possibility of having its contentions heard when the 822 Patent had been renounced, would add up to an unfairness. This was especially given to such an extent that the TBA had disavowed the 822 Patent for added matter, an issue that was excused by Arnold J. 


Roger Wyand QC, sitting as Deputy High Court Judge, examined the experts on estoppel and maltreatment of interaction at sections 49 to 76 of the judgment. While he had compassion toward the position Genentech wound up in, he held it would not be in light of a legitimate concern for equity for a full retrial of the issues chose in the 822 Action, the joined expense of which totalled some £11 million. 

Notwithstanding, the adjudicator held there was one issue that would not be res judicata, this being the date on which believability was to be evaluated. The case the board reasons that kept Genentech from running the contention in the 822 Action didn't make a difference in the 084 Action, and he thought about that there was a genuine possibility that Genentech could show the applicable cases were conceivable at the recording date considering advancements to the CGK. Outline judgment in regard of those cases was in like manner denied. 

While Lilly has effectively put a top on the majority of the issues – the tracking down that the cases coordinated at the utilization of IL-17A/F for the treatment of psoriasis needed believability at the need date is dependent upon estoppel – the debate will proceed regarding whether utilization of the immunizer for the treatment of psoriasis at the recording date of the 084 Patent was conceivable. 

Central issues to detract from the choice: 

While the EPO framework purposefully accommodates the documenting of divisional applications in circumstances where patent assurance would some way or another be lost, this case shows the ramifications this can have where a patentee looks to authorize a divisional where the parent has been refuted. 

The case additionally shows the significant job issue estoppel plays in the UK in such conditions, especially without estoppel between the EPO and UK courts (an issue raised before the EPO can hence be brought up in public procedures, cf. the situation in the US). 

For this situation, the expense of a retrial eventually weighed intensely in the appointed authority's choice that issue estoppel ought to apply, despite the way that Genentech lost its opportunity to claim when the 822 Patent was denied. While both Genentech and Lilly might have assimilated the expenses, the shortfall of issue estoppel could essentially affect a less pecunious party in a similar circumstance. 

Regardless of the appointed authority's vigorous use of the convention to most of issues Genentech wished to raise, he left the entryway open that a gathering ought not be estopped from raising any issues not brought up in before procedures. It will be fascinating to check whether and how this influences the result of any comparative cases in future.