IVAX Pharmaceuticals (UK) Ltd v Chugai Seiyaku Kabushiki Kaisha [2006] EWHC 756 (Pat) (10 April 2006)

IVAX Pharmaceuticals (UK) Ltd v Chugai Seiyaku Kabushiki Kaisha [2006] EWHC 756 (Pat) (10 April 2006)

The patent claims as granted are invalid for obviousness over US Patent 4,200,640 because it was technically obvious to use stearic acid as a lubricant in nicorandil formulations in conventional amounts, and the claims are not limited to the technical advance made. The claims are not obvious over Japanese Patent Application 57 145 659, as that prior art teaches away from the invention. The proposed amendments introduce added matter not clearly and unambiguously disclosed in the application as filed, and are therefore not allowable.

Citation
[2006] EWHC 756 (Pat)
Parties
Claimant and Part 20 Defendant: IVAX PHARMACEUTICALS (UK) LTD; Defendant and Part 20 Claimant: CHUGAI SEIYAKU KABUSHIKI KAISHA
Jurisdiction
England and Wales
Judgment Date
10 April 2006
Procedural Posture
Patent Revocation and Counterclaim for Infringement / First Instance Judgment
Outcome
Patent claims as granted held invalid for obviousness; proposed amendments refused for added matter.
Legal Topics
Patent Validity, Obviousness, Added Matter, Amendment of Patent Claims
Intellectual Property Law Patent Law Patent Validity Obviousness Added Matter Amendment of Patent Claims

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Parties

IVAX PHARMACEUTICALS (UK) LTD

Claimant and Part 20 Defendant

CHUGAI SEIYAKU KABUSHIKI KAISHA

Defendant and Part 20 Claimant

Procedural Posture

Patent Revocation and Counterclaim for Infringement / First Instance Judgment

Legal Issues

  1. 1 Whether the patent claims are invalid for obviousness over prior art (US Patent 4,200,640 and Japanese Patent Application 57 145 659)
  2. 2 Whether the proposed amendments add matter contrary to s.76(3)(a) Patents Act 1977

Ratio Decidendi

The patent claims as granted are invalid for obviousness over US Patent 4,200,640 because it was technically obvious to use stearic acid as a lubricant in nicorandil formulations in conventional amounts, and the claims are not limited to the technical advance made. The claims are not obvious over Japanese Patent Application 57 145 659, as that prior art teaches away from the invention. The proposed amendments introduce added matter not clearly and unambiguously disclosed in the application as filed, and are therefore not allowable.

Court Disposition

Patent claims as granted held invalid for obviousness; proposed amendments refused for added matter.

Orders

  • Patent revoked as granted.
  • Application to amend patent refused.