Eli Lilly & Co & Ors v Genentech Inc

Gateway (4A) of Practice Direction 6B permits service of a further claim against a defendant already subject to the court’s jurisdiction where it arises from the same or closely connected facts. The test is distinct from the necessary-and-proper-party test. Practical considerations, including procedural economy and avoiding inconsistent results, are relevant. Differences arising from legally distinct European patent designations do not necessarily prevent a sufficiently close connection.

Article 24(4) of the Brussels I (recast) Regulation is engaged where validity is properly in issue, or is to be put in issue. A pure infringement or non-infringement claim remains outside the exclusive jurisdiction rule, even where claim-construction arguments have possible validity consequences. An Arrow declaration is different because its substance concerns whether any valid claim could be infringed.

The claimants sought declarations of non-infringement concerning the UK, French, German, Spanish, Italian and Irish designations of a European patent owned by the defendant. The UK claims included revocation claims; the related foreign claims sought declarations of non-infringement and scope only.

The defendant, domiciled outside the Brussels-Lugano area, applied to set aside service of the related claims, or alternatively for a stay. It argued that the claims fell outside CPR gateway (4A), concerned the validity of foreign patents within Article 24(4) of the Brussels I (recast) Regulation, and should be stayed on forum non conveniens grounds.

1. The claimants had a properly arguable case on the merits and the much better argument that gateway (4A) applied. The related claims concerned the same product, the same assumed acts and the same European patent bundle. The fact that each designation was legally distinct and involved national law did not defeat the gateway.

2. Gateway (4A) is not equivalent in scope to the necessary-and-proper-party gateway. Its purpose is to permit joinder of a further claim based on the same or closely connected facts in the interests of justice. Procedural economy and avoidance of inconsistent results are relevant. Distinct primary facts requiring extensive disclosure and cross-examination may weaken the connection; differences which are undisputed or readily dealt with may not.

3. Article 24(4) was not engaged by the proceedings as presently constituted. The claimants’ case was fundamentally one of claim construction and non-infringement. Validity of the foreign designations was neither formally nor substantively in issue. A validity squeeze could be considered as part of claim construction without putting validity in issue.

4. The court distinguished cases where validity had been, or was to be, put in issue. Once infringement and validity are both in issue, they are inseparable for Article 24(4) purposes. However, a pure breach case remains outside the provision, even though claim scope may later prove relevant to validity.

5. The court would not pre-empt the possibility that validity might later be raised in response to an infringement counterclaim. The unusual possibility of EPO participation and the uncertainty about the relief sought justified waiting. That risk was left with the claimants as to costs.

6. England was not clearly and distinctly an inappropriate forum. The related claims involved the same product and substantially common factual and scientific issues. Foreign law was not a significant obstacle, and the Patents Court was well equipped to determine infringement of corresponding non-UK European patent designations. The applications were dismissed, subject to the costs qualification.