Ranbaxy (UK) Ltd. v Warner-Lambert Company [2006] EWCA Civ 876 (28 June 2006)

Ranbaxy (UK) Ltd. v Warner-Lambert Company [2006] EWCA Civ 876 (28 June 2006)

Claim 1 of EP (UK) 0 247 633 covers both the racemate and the individual enantiomers, as the skilled person would understand the claim to include the active enantiomer, and there is no rational basis for limiting the claim to the racemate alone. EP (UK) 0 409 281 is invalid for lack of novelty because the prior art expressly discloses the preferred enantiomer and its salts, and the skilled person would know how to resolve the racemate to obtain the enantiomer.

Citation
[2006] EWCA Civ 876
Parties
Respondent/claimant: Ranbaxy (UK) Limited; Respondent/claimant: Arrow Generics Limited; Appellant/defendant: Warner-Lambert Company
Jurisdiction
England and Wales
Judgment Date
28 June 2006
Procedural Posture
Appeal and Cross Appeal From High Court (patents Court) / Court of Appeal (civil Division) Judgment
Outcome
Appeal and cross-appeal dismissed
Legal Topics
Patent Construction, Novelty, Obviousness, Non Infringement, Stereochemistry in Pharmaceuticals
Intellectual Property Law Patent Law Patent Construction Novelty Obviousness Non Infringement Stereochemistry in Pharmaceuticals

Case Brief

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Parties

Ranbaxy (UK) Limited

Respondent/claimant

Arrow Generics Limited

Respondent/claimant

Warner-Lambert Company

Appellant/defendant

Procedural Posture

Appeal and Cross Appeal From High Court (patents Court) / Court of Appeal (civil Division) Judgment

Legal Issues

  1. 1 Whether claim 1 of EP (UK) 0 247 633 covers only the racemate or also the individual enantiomers
  2. 2 Whether EP (UK) 0 409 281 is invalid for lack of novelty and obviousness

Ratio Decidendi

Claim 1 of EP (UK) 0 247 633 covers both the racemate and the individual enantiomers, as the skilled person would understand the claim to include the active enantiomer, and there is no rational basis for limiting the claim to the racemate alone. EP (UK) 0 409 281 is invalid for lack of novelty because the prior art expressly discloses the preferred enantiomer and its salts, and the skilled person would know how to resolve the racemate to obtain the enantiomer.

Court Disposition

Appeal and cross-appeal dismissed

Orders

  • Refusal of declaration of non-infringement for Ranbaxy
  • EP (UK) 0 409 281 held invalid for lack of novelty