Actavis V Lilly: Supreme Developments

We have already reported on the Supreme Court's decision in Actavis v Lilly (see here) which, as stated, is the most important decision in the last decade regarding patent infringement. However, it did also raise many questions, particularly as it was a decision that only considered the issue of infringement, not validity. It has generally been considered important that there is a balance between these two sides of patent law. Further jurisprudence will be needed, perhaps with further cases going all the way to the Supreme Court, to clarify matters fully following what is a landmark shift for the UK into the “doctrine of equivalents” world.

Two decisions recently released have started the UK on the path to clarifying the state of patent law: (1) Generics (UK) (t/a Mylan) (2) Synthon v (1) Yeda Research and Development (2) Teva Pharmaceutical Industries [2017] EWHC 2629 (Pat) (“Mylan v Yeda”), a first instance decision of Mr Justice Arnold; and Actavis Group & Others v (1) ICOS (2) Eli Lilly & Company [2017] EWCA Civ 1671 (“Actavis v ICOS”), an appeal heard by the Lords Justices Lewison, Kitchin and Floyd.

The first issue that has been considered is whether “normal interpretation” has been affected by Actavis v Lilly. This is because, as argued in Mylan v Yeda, there are many references in the Supreme Court's judgment to the “literal meaning” of the claims. Including in the re-cast Improver questions. Such references might mean the general approach to interpretation set out in Kirin Amgen ([2004] UKHL 46) has been abandoned. However, in both Mylan v Yeda and in Actavis v ICOS it was stated that the law on normal interpretation is unchanged by the Supreme Court (but note the point was agreed in the latter case so the Lord Justices were not assisted by argument on the point).

What this means, at least for now following these two cases, is that the doctrine of equivalents acts as a layer on top of normal interpretation, without changing the purposive approach that is so familiar to patent law advisors.

The second issue that has been considered is whether there is no longer symmetry between the position on infringement and validity: that is, can a patent be novel over a reference that uses an equivalent/variant but the practicing of that reference (including the equivalent) would still infringe the patent under the principle in Actavis v Lilly. Put another way, does the Gillette defence still work as well as it did previously.

This point was...

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