Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 (17 February 2010)

Actavis UK Ltd v Novartis AG [2010] EWCA Civ 82 (17 February 2010)

The patent's assertion that the high solubility of fluvastatin would prevent the skilled person from making a sustained release formulation was illusory; the skilled person would have considered and been confident in making such a formulation using standard techniques, motivated at least by improved patient compliance. There was no real technical obstacle, and thus the claimed invention was obvious over the common general knowledge.

Citation
[2010] EWCA Civ 82
Parties
Claimant/respondent: Actavis UK Limited; Defendant/appellant: Novartis AG
Jurisdiction
England and Wales
Judgment Date
17 February 2010
Procedural Posture
Patent Invalidity Appeal / Appeal From High Court (chancery Division, Patents Court) to Court of Appeal
Outcome
Appeal dismissed; patent held invalid for obviousness.
Legal Topics
Obviousness, Inventive Step, Pharmaceutical Patents, Patent Validity
Intellectual Property Patent Law Obviousness Inventive Step Pharmaceutical Patents Patent Validity

Case Brief

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Parties

Actavis UK Limited

Claimant/respondent

Novartis AG

Defendant/appellant

Procedural Posture

Patent Invalidity Appeal / Appeal From High Court (chancery Division, Patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether EP (UK) 0948320 is invalid for obviousness under the Patents Act 1977 and EPC Art 56
  2. 2 Whether the skilled person would find it obvious to make a sustained release formulation of fluvastatin

Ratio Decidendi

The patent's assertion that the high solubility of fluvastatin would prevent the skilled person from making a sustained release formulation was illusory; the skilled person would have considered and been confident in making such a formulation using standard techniques, motivated at least by improved patient compliance. There was no real technical obstacle, and thus the claimed invention was obvious over the common general knowledge.

Court Disposition

Appeal dismissed; patent held invalid for obviousness.

Orders

  • Patent EP (UK) 0948320 declared invalid for obviousness.
  • No order as to costs specified in the judgment.