Isabel Jamal recently appeared with Thomas Raphael for Actavis UK Ltd., the successful respondent to an application by Eli Lilly (“Lilly”) for stays on the basis of alleged abuse of process, against certain actions initiated by Actavis for declarations of non-infringement of the Lilly’s patents.
The dispute between the parties relates to four actions in which Actavis is seeking anticipatory declarations of non-infringement over the UK designation of a patent and SPC owned by Lilly, and also over a number of other European designations.
When the first two actions were started, Lilly initially challenged the appropriateness of the High Court deciding matters relating to the other European designations. However the Court of Appeal held that the High Court had jurisdiction to hear the actions together ([2013] R.P.C. 37 at [49]-[53]).
Lilly’s stay application related to the two more recent actions brought by Actavis (which are for historic reasons referred to as the Fourth and Fifth Action) and any further related actions that Actavis might bring. Lilly argued that, if at the trial of the earlier actions a) it was held that the relevant procedural law relating to the ability to grant declarations of non-infringement was not lex fori but instead was to be decided by reference to the law of the country of the relevant foreign designations and b) that Actavis had not complied with such foreign law procedural requirements, then the Fourth and Fifth Actions would be an abuse of process. Conversely, if either of those findings were not made in the earlier action, then the later actions would be superfluous.
Arnold J, in dismissing the application, held that it was inappropriate to label the later actions as an abuse when, on Lilly’s case, they would only be an abuse on a contingent basis. If the earlier actions were found to be improper there was nothing to stop the applicants raising their abuse arguments over the later actions at that time.