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Actavis Group v. Eli Lilly: Cross-Border Infringement Jurisdiction Earlier this week in Actavis Group HF v. Eli Lilly & Co., [2012] EWHC 3316 (Pat)(High Court 2012)(Arnold, J.), a trial court has ruled that the home British tribunal French, German, Italian and Spanish infringement (together with British infringement). Progressive Attitude of the British Judiciary: The Court was “unimpressed by the [patentee’s] argument that foreign law is difficult and expensive to prove because it is treated as a question of fact. Nowadays, it is increasingly common for English courts to follow the approach [exemplified by] by Laddie J in Celltech R & D Ltd v MedImmune Inc [2004] EWHC 1124 (Pat)…. Furthermore, it is increasingly common in intellectual property cases for the courts of this country to apply case law from other EU Member States when deciding questions of European Union law or national law based on European conventions such as the CPC[.]” Id. at ¶ 99. The Federal Circuit Knowledge of Foreign Patent Laws: The Federal Circuit has now had what it styles as joint “en banc” sittings in Tokyo and elsewhere that manifest the understanding of the American judiciary’s knowledge of foreign patent laws and practices. Yet, a majority opinion has stated that “[p]atents and the laws that govern them are often described as complex. Indeed, one of the reasons cited for why Congress established our court was because it ‘felt that most judges didn't understand the patent system and how it worked.’ [citation omitted] As such *** the foreign sovereigns at issue in this case have established specific judges, resources, and procedures to ‘help assure the integrity and consistency of the application of their patent laws.’ Therefore, exercising jurisdiction over such subject matter could disrupt their foreign procedures.” Voda v. Cordis Corp., 476 F.3d 887, 402-03 (Fed. Cir. 2007)(Gajarsa, J.)(emphasis added). Actavis Group v. Eli Lilly: Cross-Border Infringement Jurisdiction Limitations on the Value of Actavis as precedent: To be sure, the ruling has the limitations that the patent challenger refrained from challenging validity and the patentee made various concessions that would not necessarily be made. The opinion is also carefully crafted to cover foreign jurisdictions within the European Community and where there is a common grant of a European Patent. And, of course, the patentee may choose to take the case to the Court of Appeal. Excerpts from both the British and American decisions are set forth below, while a complete copy of the British opinion is attached. Regards, Hal From Actavis Group v. Eli Lilly: 99. *** I am unimpressed by the [patentee’s] argument that foreign law is difficult and expensive to prove because it is treated as a question of fact. Nowadays, it is increasingly common for English courts to follow the approach adopted by Laddie J in Celltech R & D Ltd v MedImmune Inc [2004] EWHC 1124 (Pat), which he described at [48] as follows: “Both parties provided expert evidence on the relevant German law, that evidence being given by Mr Peter Von Rospatt for the claimant and by Mr Matthias Brandi-Dohrn for the defendant. Although those witnesses disagreed on a few important issues, the parties agreed to forego the right to cross-examine. Their position is that the relevant German case law has been identified and they are content that I should read that for the purpose of resolving relevant areas of dispute.” Furthermore, it is increasingly common in intellectual property cases for the courts of this country to apply case law from other EU Member States when deciding questions of European Union law or national law based on European conventions such as the CPC: see, for example, Grimme Landmaschinenfabrik GmbH & Co KG v Scott [2010] EWCA Civ 1110, [2011] FSR 7. 2 Actavis Group v. Eli Lilly: Cross-Border Infringement Jurisdiction 100. As to the different national approaches, I accept that there are differences. In my view, however, the differences are rather less now than they have been in the past. Certainly, in recent years the European patent judiciary have been striving for consistency. I am sceptical that the remaining differences of approach, as opposed to other factors, are responsible for different outcomes in parallel cases. In any event, it seems to me to be manifest that it will reduce the likelihood of inconsistent decisions if one court at first instance and one court on appeal determines all five of [the patent challenger’s] claims. 101. Counsel for [the patent challenger] also submitted that the English courts could provide a final determination more quickly than the French, German, Italian and Spanish courts, in particular because the pendency time on appeal from this Court to the Court of Appeal is relatively short by international standards and because a decision by the Court of Appeal is unlikely to be appealable to the Supreme Court (unlike, say, a decision of the Oberlandesgericht in Germany, which would be more readily appealable to the Bundesgerichtshof). He argued that this should be a significant factor in the exercise of the Court’s discretion as to whether to grant a stay because it was important to [the patent challenger] to achieve a final determination well before the end of 2015. 102. I accept the premises of this submission, but not the conclusion. Lord Goff’s speech in Spiliada made it clear that the decision whether to grant or refuse a stay on forum non conveniens grounds, while technically an exercise of discretion, is not an exercise in determining what course appears most convenient. The question to be determined is the appropriate forum for trial. Except where excessive delay in the foreign forum amounts to a reason for a stay to be refused in the interests of justice, that does not depend on the relative speed of the competing fora: see VTB Capital plc v Nutritek International Corp [2011] EWHC 3107 (Ch) at [199(iii)] (a point not affected by the subsequent decision of the Court of Appeal in that case). 103. Finally, counsel for [the patent challenger] relied also on the fact that [the patentee]’s European Patent Operations Department based in Windlesham has responsibility for the Patent as supporting the conclusion that England was the appropriate forum. I agree that this is a small factor favouring that conclusion. 3 Actavis Group v. Eli Lilly: Cross-Border Infringement Jurisdiction 104. Neither side relied on the location of witnesses or documents as being significant factors. 105. In conclusion, in my judgment [the patentee] has not shown that the courts of France, Germany, Italy and Spain are the appropriate fora for the trial of [the patent challenger’s] claims in relation to the French, German, Italian and Spanish designations of the Patent. Certainly I do not consider that it has shown that those courts are clearly or distinctly more appropriate than this Court. Accordingly, I would decline to grant a stay of those claims on the grounds of forum non conveniens. The Federal Circuit, Grand Conferences, Xenophobic Decision: As stated in Voda v. Cordis, “[W]e should ‘avoid unreasonable interference with the sovereign authority of other nations’[.]” Voda, 476 F.3d at 402 (citing F. Hoffmann–La Roche Ltd. v. Empagran S.A., 542 U.S. 155, 164 (2004)).” Thus, “[w]e would risk such interference by exercising supplemental jurisdiction over [the patentee]’s foreign patent infringement claims. Patents and the laws that govern them are often described as complex. Indeed, one of the reasons cited for why Congress established our court was because it ‘felt that most judges didn't understand the patent system and how it worked.’ Judge Pauline Newman, Origins of the Federal Circuit: The Role of Industry, 11 Fed. Cir. B.J. 541, 542 (2002). As such *** the foreign sovereigns at issue in this case have established specific judges, resources, and procedures to ‘help assure the integrity and consistency of the application of their patent laws.’ Therefore, exercising jurisdiction over such subject matter could disrupt their foreign procedures.” Id. at 902-03. 4 Neutral Citation Number: [2012] EWHC 3316 (Pat) Case Nos: HC12E02962 and HC12A03340 IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT Rolls Building Fetter Lane, London, EC4A 1NL Date: 27 November 2012 Before : THE HON MR JUSTICE ARNOLD - - - - - - - - - - - - - - - - - - - - - Between : ACTAVIS GROUP HF Claimant - and - ELI LILLY AND COMPANY Defendant And between : MEDIS EHF Claimant - and - ELI LILLY AND COMPANY Defendant - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - Richard Meade QC and Thomas Raphael (instructed by Bird & Bird LLP) for the Claimants Stephen Phillips QC and Thomas Mitcheson (instructed by Hogan Lovells International LLP) for the Defendant Hearing dates: 14-15 November 2012 - - - - - - - - - - - - - - - - - - - - - Approved Judgment I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic. ............................. THE HON MR JUSTICE ARNOLD THE HON MR JUSTICE ARNOLD Actavis v Lilly Approved Judgment MR JUSTICE ARNOLD : Contents Topic Paragraphs Introduction 1 Background 2-23 The parties 2-3 The Patent 4-5 The pre-action correspondence 6-10 The First Claim 11-16 The Second Claim 17-20 The German proceedings 21 France, Italy and Spain 22 European Patent Office opposition 23 Matters not in dispute 24-34 The issues 35 Was service of the First Claim validly effected under the consent for service? 36-60 The law 36-39 Assessment 40-60 Did the consent extend to a claim by Actavis Group? 41-52 Did the consent extend to a claim in respect of the non-UK designations of the Patent? 53-59 Conclusion 60 Was service of the First Claim validly effected under CPR r.63.14(2)(a)? 61-66 Was service of the First Claim validly effected under CPR r.6.9(2)? 67-80 The law 67-71 Assessment 72-80 Was service of the Second Claim validly effected under the consent for service? 81 Was there consent to jurisdiction? 82 Forum non conveniens 83-105 The law 84 Assessment 85-105 Summary of conclusions 106 Introduction 1.

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