Actavis Group HF v Eli Lilly & Company

Consent to service is construed objectively in its factual and procedural context. A consent covering proceedings by a corporate group may extend to the group’s parent operating company where the claimant’s precise identity is immaterial to the claim and procedure. A consent to service of proceedings seeking declarations of non-infringement may also extend to claims concerning several national designations where that is what the correspondence objectively conveys.

Service under CPR r. 63.14(2)(a) is limited to the claim relating to the registered United Kingdom right and cannot provide service for unrelated claims concerning foreign designations. A foreign company has a place of business in the jurisdiction where its representative department conducts the company’s business with sufficient permanence, autonomy and authority. A stay for forum non conveniens requires a clearly more appropriate available forum; the existence of separate national patent fora did not satisfy that test where the English court could determine all claims together.

Actavis Group HF and Medis ehf sought declarations that proposed dealings in pemetrexed dipotassium would not infringe the United Kingdom, French, German, Italian and Spanish designations of a European patent owned by Eli Lilly and Company. The claims did not challenge validity. Lilly accepted jurisdiction concerning the United Kingdom designation but challenged service and jurisdiction concerning the foreign designations.

The court considered whether the First Claim had been validly served by consent, under CPR r. 63.14(2)(a), or under CPR r. 6.9(2); whether the Second Claim had been served by consent; whether consent to service amounted to consent to jurisdiction; and whether the foreign claims should be stayed on forum non conveniens grounds.

1. First Claim—consent. Applying the objective contractual interpretation principles stated in Investors Compensation Scheme Ltd v West Bromwich Building Society [1998] 1 WLR 896, as summarised in Bank of Credit and Commerce International SA v Ali [2001] UKHL 8 and Chartbrook Ltd v Persimmon Homes Ltd [2009] UKHL 38, Lilly’s consent covered service by Actavis Group. The relevant question was what a reasonable person with the available background knowledge would understand. The precise identity of the group company was immaterial to the declarations sought and to the procedural issues identified. The consent also covered claims concerning the non-UK designations.
2. Alternative service. Service at Lilly’s United Kingdom patent address was good service for the United Kingdom designation but not for the foreign designations. Rule 63.14(2)(a) was properly construed as applying only so far as the claim form related to the registered right. The First Claim was, however, validly served under rule 6.9(2). Lilly had a fixed and sufficiently permanent place of business at the Lilly Research Centre through its European Patent Operations Department. The department conducted Lilly’s European patent business in Lilly’s name and under substantial delegated authority, including authority concerning enforcement and abandonment of patents.
3. Second Claim and jurisdiction. Lilly had withdrawn any consent to service of claims concerning the foreign designations before the Second Claim was served, so that claim was not served by consent. Consent to service of the First Claim, coupled with the circumstances of the correspondence, also amounted to consent to this court’s jurisdiction.
4. Forum non conveniens. Applying Spiliada Maritime Corp v Cansulex Ltd [1987] AC 460, Lilly did not show that the courts of France, Germany, Italy or Spain were clearly or distinctly more appropriate. The ability of this court to determine all five designation claims together reduced costs and the risk of inconsistent decisions. The applications for a stay were therefore refused.