Hospira UK Ltd v Genentech Inc

Hospira UK Ltd v Genentech Inc

The Court of Appeal held that the patents were invalid for lack of inventive step. The claimed combination of excipients for a lyophilised formulation of trastuzumab was obvious to the skilled person at the priority date, as all excipients were part of the common general knowledge, the screening methods were routine, and there was sufficient motivation and expectation of success. The judge's assessment of obviousness was upheld, and no error of principle was found.

Parties
Claimant/respondent: Hospira UK Limited; Defendant/appellant: Genentech, Inc.
Jurisdiction
England and Wales
Judgment Date
27 July 2016
Procedural Posture
Civil Appeal Patents / 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, Pharmaceutical Patents, Patent Revocation
Intellectual Property Law Patent Law Obviousness Inventive Step Pharmaceutical Patents Patent Revocation

Case Brief

Summary, issues, holding and outcome

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Parties

Hospira UK Limited

Claimant/respondent

Genentech, Inc.

Defendant/appellant

Procedural Posture

Civil Appeal Patents / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether the patents for a lyophilised formulation of trastuzumab were invalid for lack of inventive step (obviousness) and added matter
  2. 2 Whether the skilled person would have been motivated to arrive at the claimed invention based on the prior art and common general knowledge
  3. 3 Whether the approach to obviousness adopted by the trial judge was correct in law

Ratio Decidendi

The Court of Appeal held that the patents were invalid for lack of inventive step. The claimed combination of excipients for a lyophilised formulation of trastuzumab was obvious to the skilled person at the priority date, as all excipients were part of the common general knowledge, the screening methods were routine, and there was sufficient motivation and expectation of success. The judge's assessment of obviousness was upheld, and no error of principle was found.

Court Disposition

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

Orders

  • Appeal dismissed
  • Patents declared invalid for lack of inventive step