Case details

Actavis Group PTC EHF and others (Respondents) v ICOS Corporation and another (Appellants)

Case ID: UKSC 2017/0214

Case summary


What is the correct test for obviousness in the context of assessing the validity of a pharmaceutical patent?


Tadalafil is the generic name of a later drug sold under the brand name Cialis for the treatment of male erectile dysfunction. The European patent is owned by ICOS and exclusively licensed to Eli Lilly. It is considered an alternative to the drug Sildenafil, which is marketed as Viagra. The Respondents began proceedings to revoke the Tadalafil patent to allow the marketing of their own products. They argued that the matters disclosed in the specification extended beyond that disclosed in the application for the patent as filed, that the patent lacked novelty over three publications (Anderson, Stoner and Oren), that the patent was obvious in light of another publication (Daugan), and the specification of the patent did not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. The judge found that all the claims of the patent, save claims 2 and 12, were entitled to their claimed priority date. Claims 2 and 12 lacked novelty in the light of earlier publications, the allegation of obviousness from the disclosure of Daugan failed; and Lilly's counterclaim succeeded so that the Respondents would infringe the patent if they were to launch their intended products. The Court of Appeal allowed the appeal by the Respondents on the ground of obviousness and declared the Tadalafil patent invalid. The Appellants now appeal to the Supreme Court of the United Kingdom

Judgment appealed

[2017] EWCA Civ 1671


  1. ICOS Corporation
  2. Eli Lilly and Company
  1. Actavis Group PCT EHF
  2. Actavis UK Ltd
  3. Teva UK Ltd
  4. Teva Pharmaceutical Industries Ltd
  5. Teva UK Ltd
  6. Teva Pharmaceutical Industries Ltd
  7. Generics (UK) Ltd (t/a Mylan)



Lady Hale, Lord Kerr, Lord Sumption, Lord Hodge, Lord Briggs

Hearing start date

19 Nov 2018

Hearing finish date

20 Nov 2018

Watch hearing
19 Nov 2018 Morning session Afternoon session
20 Nov 2018 Morning session