Celltrion Inc. v Genentech, Inc & Anor

Celltrion Inc. v Genentech, Inc & Anor

Claim 1 of the Patent is novel over Liu because the prior art does not provide an individualised description of the claimed formulation, particularly regarding the concentration of polysorbate 20 and the selection from multiple alternatives. The doctrine of equivalents does not apply to the assessment of novelty. Claim 1 is inventive over Shiraki because it would not have been obvious to try the specific concentrations of omalizumab and polysorbate 20 as claimed. The patent does not disclose added matter or insufficiency. The patent is valid and infringed.

Parties
Claimant/part 20 Defendant: Celltrion Inc.; Defendant/part 20 Claimant: Genentech, Inc; Defendant/part 20 Claimant: Novartis AG; Defendant/part 20 Claimant: Novartis Pharmaceuticals UK Limited; Part 20 Defendant: Celltrion Healthcare United Kingdom Limited
Jurisdiction
England and Wales
Judgment Date
30 January 2025
Procedural Posture
Patent Revocation and Counterclaim for Infringement / Judgment After Trial
Outcome
Patent valid and infringed
Legal Topics
Novelty, Inventive Step, Obviousness, Added Matter, Insufficiency, Doctrine of Equivalents
Intellectual Property Patents Novelty Inventive Step Obviousness Added Matter Insufficiency Doctrine of Equivalents

Case Brief

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Parties

Celltrion Inc.

Claimant/part 20 Defendant

Genentech, Inc

Defendant/part 20 Claimant

Novartis AG

Defendant/part 20 Claimant

Novartis Pharmaceuticals UK Limited

Defendant/part 20 Claimant

Celltrion Healthcare United Kingdom Limited

Part 20 Defendant

Procedural Posture

Patent Revocation and Counterclaim for Infringement / Judgment After Trial

Legal Issues

  1. 1 Whether claim 1 of European Patent (UK) No. 3 805 248 B1 lacks novelty over prior art (Liu)
  2. 2 Whether claim 1 lacks inventive step over Shiraki
  3. 3 Whether the patent discloses added matter

Ratio Decidendi

Claim 1 of the Patent is novel over Liu because the prior art does not provide an individualised description of the claimed formulation, particularly regarding the concentration of polysorbate 20 and the selection from multiple alternatives. The doctrine of equivalents does not apply to the assessment of novelty. Claim 1 is inventive over Shiraki because it would not have been obvious to try the specific concentrations of omalizumab and polysorbate 20 as claimed. The patent does not disclose added matter or insufficiency. The patent is valid and infringed.

Court Disposition

Patent valid and infringed

Orders

  • Claim for revocation dismissed
  • Counterclaim for infringement succeeds