Merck Sharp and Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477

Merck Sharp and Dohme Corporation v Wyeth LLC (No 3) [2020] FCA 1477

The claims of Wyeth's 013 patent are valid and are infringed by MSD's proposed 15-valent vaccine, because the use of 'comprising' in the claims is inclusive, covering the addition of further serotypes as long as the 13 specified serotypes conjugated to CRM197 are present. The MSD validity attacks (novelty, inventive step, fair basis, clarity, utility, manner of manufacture) on the 013 patent fail: the prior art did not unambiguously disclose the claimed composition; the invention required technical steps not routine for the skilled team as at the priority date; and the claims are supported by the specification. For the 844 patent, however, the claims are invalid for lack of support—the...

Parties
First Applicant / First Cross Respondent: Merck Sharp & Dohme Corporation; Second Applicant / Second Cross Respondent: Merck Sharp & Dohme (Australia) Pty Ltd; Respondent / Cross Claimant: Wyeth LLC
Jurisdiction
Australia
Judgment Date
14 October 2020
Procedural Posture
Patent Infringement and Revocation Proceeding / Judgment Post Trial
Outcome
The asserted 013 patent claims (Merck Sharp & Dohme Corporation v Wyeth LLC) are valid and infringed. The asserted 844 patent claims and container patent claims are invalid. Court directs the parties to confer and provide proposed draft orders; no final orders on injunction or damages yet. MSD's interlocutory...
Legal Topics
Patents, Patent Infringement, Patent Validity, Inventive Step, Novelty, Support (disclosure and Enablement), Utility, Manner of Manufacture, Interpretation of Claims
Intellectual Property Law Patents Patent Infringement Patent Validity Inventive Step Novelty Support (disclosure and Enablement) Utility +2 more

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Parties

Merck Sharp & Dohme Corporation

First Applicant / First Cross Respondent

Merck Sharp & Dohme (Australia) Pty Ltd

Second Applicant / Second Cross Respondent

Wyeth LLC

Respondent / Cross Claimant

Procedural Posture

Patent Infringement and Revocation Proceeding / Judgment Post Trial

Legal Issues

  1. 1 Whether MSD's 15-valent vaccine would infringe asserted Wyeth patents
  2. 2 Whether the asserted claims of Wyeth's patents are invalid for lack of novelty, lack of inventive step, lack of support, lack of fair basis, lack of clarity, lack of utility, or not being a manner of manufacture

Ratio Decidendi

The claims of Wyeth's 013 patent are valid and are infringed by MSD's proposed 15-valent vaccine, because the use of 'comprising' in the claims is inclusive, covering the addition of further serotypes as long as the 13 specified serotypes conjugated to CRM197 are present. The MSD validity attacks (novelty, inventive step, fair basis, clarity, utility, manner of manufacture) on the 013 patent fail: the prior art did not unambiguously disclose the claimed composition; the invention required technical steps not routine for the skilled team as at the priority date; and the claims are supported by the specification. For the 844 patent, however, the claims are invalid for lack of support—the...

Court Disposition

The asserted 013 patent claims (Merck Sharp & Dohme Corporation v Wyeth LLC) are valid and infringed. The asserted 844 patent claims and container patent claims are invalid. Court directs the parties to confer and provide proposed draft orders; no final orders on injunction or damages yet. MSD's interlocutory...

Orders

  • The parties provide short minutes of order to chambers as to the appropriate form of orders giving effect to these reasons and costs, with any areas of disagreement marked up, by 4 November 2020.
  • The interlocutory application filed by the applicants/cross-respondents on 24 July 2020 be dismissed, with no order as to costs.