Merck Sharp & Dohme Corp. v. Wyeth LLC

Merck Sharp & Dohme Corp. v. Wyeth LLC

Claim 1 of the 363 Patent is to be construed as limited to the 13 specifically recited serotypes; the asserted composition and use claims of Canadian Patent No. 2,604,363 (Claims 1-6,13-14,17-19,22-30,36-38) are valid but limited to those 13 serotypes; the Formulation Patents (Canadian Patent Nos. 2,650,056 and 2,803,111) are invalid for obviousness except that claims directed to serotype selection are invalid for obviousness-type double patenting; specific claims of the Formulation Patents are declared invalid and of no effect as listed in the judgment.

Citation
2021 FC 317
Parties
Plaintiff: Merck Sharp & Dohme Corp.; Plaintiff: Merck Canada Inc.; Defendant: Wyeth LLC
Court
Federal Court
Jurisdiction
Canada
Judgment Date
30 April 2021
Procedural Posture
Patent Invalidity Action Relating to Pneumococcal Conjugate Vaccine Patents / Judgment After Trial
Outcome
Plaintiff's action granted in part; composition patent claims valid but limited to the 13 recited serotypes; formulation patents or specified claims invalid
Legal Topics
Patent Validity, Anticipation, Obviousness, Claim Construction, Enablement, Double Patenting, Formulation Patents, Composition Patents, Overbreadth, Utility
Source Language
English
Intellectual Property Patent Law Pharmaceuticals Patent Validity Anticipation Obviousness Claim Construction Enablement +5 more

Case Brief

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Parties

Merck Sharp & Dohme Corp.

Plaintiff

Merck Canada Inc.

Plaintiff

Wyeth LLC

Defendant

Procedural Posture

Patent Invalidity Action Relating to Pneumococcal Conjugate Vaccine Patents / Judgment After Trial

Legal Issues

  1. 1 Whether claims of Canadian Patent No. 2,604,363 (the 363 Patent) are limited to the 13 listed serotypes
  2. 2 Whether Claim 1 of the 363 Patent is anticipated by Peña 2004
  3. 3 Whether the 363 Patent and its dependent claims are obvious or obvious-to-try

Ratio Decidendi

Claim 1 of the 363 Patent is to be construed as limited to the 13 specifically recited serotypes; the asserted composition and use claims of Canadian Patent No. 2,604,363 (Claims 1-6,13-14,17-19,22-30,36-38) are valid but limited to those 13 serotypes; the Formulation Patents (Canadian Patent Nos. 2,650,056 and 2,803,111) are invalid for obviousness except that claims directed to serotype selection are invalid for obviousness-type double patenting; specific claims of the Formulation Patents are declared invalid and of no effect as listed in the judgment.

Court Disposition

Plaintiff's action granted in part; composition patent claims valid but limited to the 13 recited serotypes; formulation patents or specified claims invalid

Orders

  • The Plaintiff's action is granted in part
  • Claims 1-6, 13-14, 17-19, 22-30, and 36-38 of Canadian Patent No. 2,604,363 are valid but limited to 13 serotypes