Patent - Infringement - Proceedings for infringement
Eli Lilly & Company v Human Genome Sciences Inc: CA (Civ) (Lord Justices Hooper, Lewison, Sir Robin Jacob): 5 September 2012
The proceedings, which had been extensively litigated, concerned the respondent company’s (HGS) European Patent (UK) No 0 939 804 (the patent).
The patent described the encoding nucleotide, the amino acid sequence, and certain antibodies of a new human protein called ‘Neutrokine-α’ (N). Following a decision of the Supreme Court in the proceedings (see  All ER (D) 18 (Nov)), issues remained for determination. The first issue related to claims 18 and 19 of the original claim, which related to pharmaceutical and diagnostic compositions.
Claim 13 concerned antibodies binding specifically to N, and was of some commercial significance. HGS appealed the Patent Court’s finding that claims 18 and 19 were insufficient. Eli Lilly and Co (Lilly), the respondent company, appealed the court’s finding that claim 13 was sufficient and contended that its amendment did not extend the protection it provided.
HGS contended that the judge had proceeded on the basis of an erroneous construction, and that read in the context of the specification as a whole, the skilled reader would not expect the patentee to have intended claims 18 and 19 to be directed to compositions with immediate practical use as a pharmaceutical or diagnostic. With regard to claim 13, the principal issue was whether, on the true construction of the claim, the amended claim offered more protection than the unamended claim. If that was the case, then Lilly’s objection would be made out.
In particular, it was necessary to consider what was meant by the use of the phrase ‘a portion’ in relation to the amendment, which Lilly contended had the effect of widening the claim. In considering the issues, the court had regard to the decision in Kirin-Amgen Inc v Hoechst Marion Roussel Ltd; Hoechst Marion Roussel Ltd v Kirin-Amgen  All ER (D) 286 (Oct).
The court ruled: (1) Having considered the evidence and the arguments on both sides, the judge had not proceeded on the basis of an erroneous construction, and the claims were not insufficient (see ,  of the judgment). HGS’ applications regarding claims 18 and 19 would be allowed (see  of the judgment).
(2) In deciding the issue regarding claim 13, it was necessary to determine whether there had been an extension of protection by amendment by construing the claim before and after amendment. If, following that comparison, the court held that the amended claim provided more protection than the unamended claim, the objection would be made out. In construing the amended claim, it was legitimate to take into account the unamended claim, for the exercise depended on a comparison of the amended and unamended patent (see  of the judgment).
On the proper interpretation of the claim, the word ‘portion’ would not limit the claim to parts which had not been identified or which the reader had not been told how to identify. Had the patentee meant to give the word ‘portion’ a different meaning, not only would the patentee have said so, but he would have informed the reader how to identify such portions (see ,  of the judgment). Lilly’s appeal regarding claim 13 would fail (see  of the judgment).
Andrew Waugh QC and Miles Copeland (instructed by Field Fisher Waterhouse) for Lilly; Simon Thorley QC and Michael Tappin QC (instructed by Powell Gilbert) for HGS.