Hoechst Marion Roussel Ltd. & Ors v Kirin-Amgen Inc. & Ors [2002] EWHC 471 (Patents) (21st March, 2002)

Hoechst Marion Roussel Ltd. & Ors v Kirin-Amgen Inc. & Ors [2002] EWHC 471 (Patents) (21st March, 2002)

Where an amendment is solely a deleting amendment to remove invalid claims from a partially valid patent, the court should grant the amendment unless there are exceptional circumstances. The presence of invalid claims does not infect the valid claims, and the valid claims remain enforceable. Relief by way of damages, costs, or expenses is only available if the specification was drafted in good faith and with reasonable skill and knowledge. In this case, the amendment to delete Claims 19-25 is allowed, and Amgen is entitled to damages, costs, and expenses for infringement of the valid claims, as the specification was not shown to have been drafted in bad faith or without reasonable skill...

Citation
[2002] EWHC 471 (Patents)
Parties
Claimants: Hoechst Marion Roussel and others; Defendants: Kirin-Amgen Inc. and others
Jurisdiction
England and Wales
Procedural Posture
Patent Amendment and Revocation Proceedings / Judgment After Hearing of Amendment and Revocation Applications
Outcome
Amendment allowed; patent not revoked; Amgen entitled to damages, costs, and expenses for infringement of valid claims.
Legal Topics
Patent Amendment, Patent Revocation, Partial Validity of Patents, Good Faith in Patent Drafting, Entitlement to Damages After Amendment
Intellectual Property Law Patent Law Patent Amendment Patent Revocation Partial Validity of Patents Good Faith in Patent Drafting Entitlement to Damages After Amendment

Case Brief

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Parties

Hoechst Marion Roussel and others

Claimants

Kirin-Amgen Inc. and others

Defendants

Procedural Posture

Patent Amendment and Revocation Proceedings / Judgment After Hearing of Amendment and Revocation Applications

Legal Issues

  1. 1 Whether the court should allow amendment of the patent by deleting invalid claims (Claims 19-25)
  2. 2 Whether the patent should be revoked due to alleged lack of good faith or skill in drafting
  3. 3 Whether Amgen is entitled to damages, costs, and expenses after amendment

Ratio Decidendi

Where an amendment is solely a deleting amendment to remove invalid claims from a partially valid patent, the court should grant the amendment unless there are exceptional circumstances. The presence of invalid claims does not infect the valid claims, and the valid claims remain enforceable. Relief by way of damages, costs, or expenses is only available if the specification was drafted in good faith and with reasonable skill and knowledge. In this case, the amendment to delete Claims 19-25 is allowed, and Amgen is entitled to damages, costs, and expenses for infringement of the valid claims, as the specification was not shown to have been drafted in bad faith or without reasonable skill...

Court Disposition

Amendment allowed; patent not revoked; Amgen entitled to damages, costs, and expenses for infringement of valid claims.

Orders

  • Patent amended by deletion of Claims 19-25 inclusive.
  • Patent not revoked.