American Home Products Corp & Anor v Novartis Pharmaceuticals UK Ltd & Anor [2000] EWCA Civ 231 (27 July 2000)

American Home Products Corp & Anor v Novartis Pharmaceuticals UK Ltd & Anor [2000] EWCA Civ 231 (27 July 2000)

Claim 1, properly construed, is limited to rapamycin itself and does not extend to derivatives such as SDZ RAD. The specification does not provide an enabling disclosure sufficient to support a claim to derivatives, as it does not teach the skilled person how to identify or make such derivatives with the required immunosuppressant activity without undue research. Therefore, if claim 1 were construed to cover derivatives, it would be invalid for insufficiency. Novartis's product SDZ RAD, being a derivative, does not infringe claim 1 as properly construed.

Citation
[2000] EWCA Civ 231
Parties
Appellant/defendant/claimant: Novartis Pharmaceuticals UK Limited and Novartis Pharma AG; Respondent/patentee/exclusive Licensee: Professor Sir Roy Calne and American Home Products Corporation
Jurisdiction
England and Wales
Judgment Date
27 July 2000
Procedural Posture
Patent Infringement and Declaration of Non Infringement / Appeal From First Instance Judgment
Outcome
Appeal allowed
Legal Topics
Patent Construction, Sufficiency of Disclosure, Second Medical Use Claims, Swiss Type Claims, Infringement, Scope of Claims
Intellectual Property Law Patent Law Patent Construction Sufficiency of Disclosure Second Medical Use Claims Swiss Type Claims Infringement Scope of Claims

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 9 Party arguments 2
Sign in to unlock

Parties

Novartis Pharmaceuticals UK Limited and Novartis Pharma AG

Appellant/defendant/claimant

Professor Sir Roy Calne and American Home Products Corporation

Respondent/patentee/exclusive Licensee

Procedural Posture

Patent Infringement and Declaration of Non Infringement / Appeal From First Instance Judgment

Legal Issues

  1. 1 Whether claim 1 of the patent covers derivatives of rapamycin such as SDZ RAD
  2. 2 Whether the patent specification is sufficient if claim 1 is construed to cover derivatives
  3. 3 Whether Novartis infringed the patent

Ratio Decidendi

Claim 1, properly construed, is limited to rapamycin itself and does not extend to derivatives such as SDZ RAD. The specification does not provide an enabling disclosure sufficient to support a claim to derivatives, as it does not teach the skilled person how to identify or make such derivatives with the required immunosuppressant activity without undue research. Therefore, if claim 1 were construed to cover derivatives, it would be invalid for insufficiency. Novartis's product SDZ RAD, being a derivative, does not infringe claim 1 as properly construed.

Court Disposition

Appeal allowed

Orders

  • Declaration of non-infringement granted to Novartis
  • Claim 1 construed as limited to rapamycin itself, not derivatives