Tercica Inc v (1) Avecia Ltd. Insmed Inc Genentech Inc [2005] EWHC 984 (Ch) (20 May 2005)

Tercica Inc v (1) Avecia Ltd. Insmed Inc Genentech Inc [2005] EWHC 984 (Ch) (20 May 2005)

The applications for summary judgment are dismissed because the issues of construction, novelty, and the scope of the patent (particularly the meaning of 'anabolic state' and the effect of the prior art) are not sufficiently clear to be determined without a full trial and expert evidence. The applicants have not demonstrated that the respondents have no real prospect of success.

Citation
[2005] EWHC 984 (Ch)
Parties
Claimant: Tercica Inc; Defendant/applicant/claimant: Avecia Limited; Defendant/applicant/claimant: Insmed Inc; Defendant/respondent: Genentech Inc
Jurisdiction
England and Wales
Judgment Date
20 May 2005
Procedural Posture
Patent Infringement and Revocation Actions (linked) / Summary Judgment Applications
Outcome
Applications for summary judgment dismissed
Legal Topics
Patent Infringement, Patent Revocation, Novelty, Swiss Type Claims, Method of Treatment Exclusion, Summary Judgment
Intellectual Property Patent Law Patent Infringement Patent Revocation Novelty Swiss Type Claims Method of Treatment Exclusion Summary Judgment

Case Brief

Summary, issues, holding and outcome

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Parties

Tercica Inc

Claimant

Avecia Limited

Defendant/applicant/claimant

Insmed Inc

Defendant/applicant/claimant

Genentech Inc

Defendant/respondent

Procedural Posture

Patent Infringement and Revocation Actions (linked) / Summary Judgment Applications

Legal Issues

  1. 1 Whether the patent in suit lacks novelty over prior art (Maack, Binkert, Spencer II)
  2. 2 Whether the patent discloses a method of treatment excluded under section 4(2) Patents Act 1977
  3. 3 Whether summary judgment is appropriate given disputes of construction and expert evidence

Ratio Decidendi

The applications for summary judgment are dismissed because the issues of construction, novelty, and the scope of the patent (particularly the meaning of 'anabolic state' and the effect of the prior art) are not sufficiently clear to be determined without a full trial and expert evidence. The applicants have not demonstrated that the respondents have no real prospect of success.

Court Disposition

Applications for summary judgment dismissed

Orders

  • Applications for summary judgment by Avecia and Insmed are dismissed.