Chugai Pharmaceutical Co. Ltd v (1) UCB Pharma S.A. and (2) Celltech R&D Limited, UK, High Court, Carr J, 26 May 2017

These proceedings concerned an application by Chugai Pharmaceuticals (“Chugai”) for a declaration that it was not obliged to continue to pay royalties under a patent licence granted by the First Defendant (“UCB”). The licence in question concerned a portfolio of patents relating to a humanised anti-IL-6 receptor antibody known as tocilizumab.
Since 12 January 2016 only a single patent in the portfolio remained in force – US 7,556,771 (“the 771 Patent”).

Chugai’s arguments were in part based on a validity/infringement squeeze arguing that if the claims of the 771 Patent were construed to cover the tocilizumab products that would cause the 771 Patent not to be valid in light of the prior art considered by the USPTO when the 771 Patent had been granted. UCB objected that this raised the question of the validity of the 771 Patent and asserted that the validity of a foreign patent was not justiciable in the UK Courts.
Carr J, refused UCB’s application to strike out the relevant part of Chugai’s claim.

The licence provided that the agreement was governed under English law and under the agreement the parties agreed to submit to the exclusive jurisdiction of the English Courts. The judge considered that Chugai’s claims did not ask the Court to rule on the validity of the 771 Patent. Rather Chugai’s claims were limited to the contractual question of the relevant scope of the licence and that any attack on the validity of the 771 Patent was purely incidental. Reaching this conclusion the judge contrasted the present case with a case involving a direct challenge to the validity of a foreign patent which the judge considered would not have been justiciable.

The judgment can be found here.

Headnote: Nicholas Fox, Simmons & Simmons LLP