Latest News — June 2017

Strike out and summary judgment rejected in patent royalty challenge

In Chugai Pharma v UCB & Ors [2017] EWHC 1216 (Pat) the claimant (“Chugai”) sought a declaration against the defendants (together “UCB”) that it is not obliged to continue to pay royalties under a worldwide non-exclusive licence granted by the first defendant UCB Pharma to Chugai (the “Licence”). The Licence is for a portfolio of patents relating to products containing a humanised anti-IL-6 receptor antibody known as tocilizumab.

After 12 January 2016, the only patent remaining in force to which the Licence continued to apply was US Patent 7,556,771 (the “771 Patent”). Chugai claims that its tocilizumab products, which are, in part, manufactured and sold in the USA, fall outside the scope of the claims of the 771 Patent. Chugai does not claim that the 771 Patent is invalid, but validity is at issue because it is Chugai’s case that a certain ambiguity in the claim wording should be resolved in their favour under US construction rules: that otherwise on UCB’s construction the 771 Patent would be invalid over prior art called Queen. In response, UCB alleged that in substance, the declaration sought concerns not only the scope but also the validity of the 771 Patent and that it is therefore non-justiciable in the English court (it would offend against the Moçambique principle). On this basis UCB sought to strike out this application and summary judgment.

Dismissing the strike out and summary judgment application Carr J rejected UCB’s submission that Chugai is challenging the 771 Patent’s validity by formulating its claim as a contractual one for a declaration concerning royalties, or by characterising it as one concerned with infringement of the 771 Patent. Although it is the judge’s provisional view that direct challenges to the validity of foreign patents should not be justiciable in the English courts, it was not necessary for him to reach a conclusion on this important question in this case.

The decision