Forum Non Conveniens

• Author: International Law Group

Eli Lilly & Co. is an Indiana corporation that makes and distributes human growth hormone (hGH) produced through recombinant DNA technology. Novo Nordisk is a company incorporated in the Kingdom of Denmark that manufactures and markets pharmaceutical products.

Beginning in December 1983, Novo Nordisk filed several international and national patent applications having to do with the synthesis of hGH and other proteins using a process called "enzyme cleavage." Nordisk received European Patent No. '814 in May 1990 dealing with protein hGH and the enzyme DAP-1. Later there were applications and patents in several countries including the U.S. A dispute arose between Lilly and Nordisk that centered on certain continuations. Thus, continuation '783 depended on continuation '230, continuation '856 depended on continuation '602.

The latter significantly extended to proteins other than hHG but was limited to an enzyme cleavage by DAP-1. In June 1993, Lilly and Nordisk entered into a license (split into two for tax reasons). A dispute then focused on the U.S. segment of the 1993 license. In the substantive provisions of this U.S. license (exhibit 1), Nordisk granted Lilly a non-exclusive right in the U.S. to make, use or sell the product covered by the U.S. continuation application '783 filed in September 1990 which at the time was abandoned.

Clause 14.1 of Exhibit 1 included the following provision. "This Agreement shall be construed in accordance with English law. In the event of any controversy or claim arising out of or in relation to or in connection with any provision of this Agreement, including breach hereof, the parties hereto shall try to settle the problem amicably between themselves. Should the parties hereto fail to agree, the matter in dispute may be finally settled by arbitration in London, in accordance with the arbitration rules of the International Chamber of Commerce, unless otherwise can be agreed to by the parties. In the event that the parties hereto cannot agree to final settlement by arbitration, the dispute shall be referred to the courts of London, England."

Nordisk and associated companies sued Lilly in a New Jersey federal court in October 1997, alleging infringement of three of its five U.S. patents, in particular '602 relating to hGH. Lilly admitted marketing a product known as "Humatrope" but denied patent infringement and affirmatively claimed a license under the patent in suit. The following year, Lilly obtained a writ...