Hospira UK Ltd v Genentech Inc [2016] EWCA Civ 780 (27 July 2016)

Hospira UK Ltd v Genentech Inc [2016] EWCA Civ 780 (27 July 2016)

The claimed patent formulation was obvious because the excipients and screening methods were part of the skilled person's common general knowledge, the empirical testing was routine, and there was a fair expectation of success; no inventive step was involved.

Citation
[2016] EWCA Civ 780
Parties
Claimant/respondent: Hospira UK Limited; Defendant/appellant: Genentech, Inc.
Jurisdiction
England and Wales
Judgment Date
27 July 2016
Procedural Posture
Patent Revocation Appeal / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed; patents held invalid for lack of inventive step.
Legal Topics
Obviousness, Inventive Step, Added Matter, Pharmaceutical Formulations

Case Brief

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Parties

Hospira UK Limited

Claimant/respondent

Genentech, Inc.

Defendant/appellant

Procedural Posture

Patent Revocation Appeal / Appeal From High Court (patents Court) to Court of Appeal

  1. 1 Whether the claimed patent formulation was obvious over prior art (Carter)
  2. 2 Whether the patent involved an inventive step
  3. 3 Whether the patent contained added matter

Ratio Decidendi

The claimed patent formulation was obvious because the excipients and screening methods were part of the skilled person's common general knowledge, the empirical testing was routine, and there was a fair expectation of success; no inventive step was involved.

Court Disposition

Appeal dismissed; patents held invalid for lack of inventive step.

Orders

  • Appeal dismissed
  • Patents remain revoked for lack of inventive step