The High Court has allowed Eli Lilly’s challenge to an Irish patent to continue through discovery and other pre-trial steps, while staying the fixing of a trial date until after 30 November 2019. The ruling concerns the patent’s validity and the timing of the Irish revocation proceedings; it does not decide whether the patent is valid.
Eisai R&D Management Co. Ltd, the patentee, sought a stay of the Irish case pending an appeal before the European Patent Office’s Technical Board of Appeal. The EPO Opposition Division had maintained the European patent as granted in February 2018, and Eli Lilly had appealed. Eli Lilly brought the Irish revocation petition in October 2017. It argues that it needs early commercial certainty before deciding whether to invest in manufacturing preparations at its Kinsale, County Cork site for a potential Alzheimer’s treatment.
Eisai argued that parallel proceedings risked duplicating costly work and using court resources on a patent that the EPO might revoke or amend. The High Court accepted that the usual starting point is to stay national proceedings where possible, but found that Eli Lilly had shown sufficient reasons to continue the preparatory steps. It relied on evidence that manufacturing investment decisions might need to be made years before a possible launch, and on the public interest in avoiding delay to a potential treatment, while recognising that clinical trials might fail.
The judge distinguished the case from an earlier Irish patent dispute in which an undertaking removed the petitioner’s commercial uncertainty during the stay. Here, the court considered the risk to Eli Lilly from delaying preparations alongside the possibility that discovery and trial preparation costs could be wasted if the EPO revoked or amended the patent. It also noted that the EPO’s decision would not necessarily end the Irish case: Eli Lilly said it would continue its challenge if the patent were upheld.
The order stays the fixing of an Irish trial date until after 30 November 2019. It refuses Eisai’s request to stay discovery, experiments and other interlocutory steps needed to ready the case for trial. The stay application was adjourned for mention on 2 December 2019. The parties’ discovery motions were adjourned for mention on 8 October 2018 to fix a hearing date, with the judge urging the parties to try to agree discovery. The court did not finally determine costs; it indicated that costs of the motion to date might be costs in the cause, subject to hearing the parties.