Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) (10 September 2015)

Generics (UK) Ltd (t/a Mylan) v Warner-Lambert Company LLC [2015] EWHC 2548 (Pat) (10 September 2015)

The patent was found invalid for insufficiency in respect of claims to neuropathic pain and other broad pain indications, as the disclosure did not enable the invention across the full scope claimed. The patent was also found obvious over certain prior art. On infringement, Actavis did not infringe the patent because their product was not marketed or supplied with intention or knowledge it would be used for the patented indication (pain). Some communications by Warner-Lambert constituted unjustified threats under section 70 of the Patents Act 1977.

Citation
[2015] EWHC 2548 (Pat)
Parties
Claimant: Generics (UK) Limited trading as Mylan; Defendant/claimant: Warner-Lambert Company LLC; Claimant/defendant/part 20 Claimant: Actavis Group PTC EHF; Defendant/part 20 Claimant: Actavis UK Limited; Defendant/part 20 Claimant: Caduceus Pharma Limited; Part 20 Defendant: Pfizer Limited; Intervener: Secretary of State for Health
Jurisdiction
England and Wales
Judgment Date
10 September 2015
Procedural Posture
Patent Infringement and Revocation / First Instance Judgment After Expedited Trial
Outcome
Patent revoked for insufficiency and obviousness; infringement claim dismissed; some threats found unjustified.
Legal Topics
Patent Validity, Patent Infringement, Second Medical Use Patents, Swiss Form Claims, Threats Under Patents Act 1977, Obviousness, Insufficiency, Competition Law (reserved)
Intellectual Property Pharmaceutical Law Patent Validity Patent Infringement Second Medical Use Patents Swiss Form Claims Threats Under Patents Act 1977 Obviousness +2 more

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Parties

Generics (UK) Limited trading as Mylan

Claimant

Warner-Lambert Company LLC

Defendant/claimant

Actavis Group PTC EHF

Claimant/defendant/part 20 Claimant

Actavis UK Limited

Defendant/part 20 Claimant

Caduceus Pharma Limited

Defendant/part 20 Claimant

Pfizer Limited

Part 20 Defendant

Secretary of State for Health

Intervener

Procedural Posture

Patent Infringement and Revocation / First Instance Judgment After Expedited Trial

Legal Issues

  1. 1 Whether European Patent (UK) No. 0 934 061 is invalid for obviousness and/or insufficiency
  2. 2 Whether Actavis infringed the patent by marketing generic pregabalin for non-patented indications
  3. 3 Whether Warner-Lambert made unjustified threats under section 70 of the Patents Act 1977

Ratio Decidendi

The patent was found invalid for insufficiency in respect of claims to neuropathic pain and other broad pain indications, as the disclosure did not enable the invention across the full scope claimed. The patent was also found obvious over certain prior art. On infringement, Actavis did not infringe the patent because their product was not marketed or supplied with intention or knowledge it would be used for the patented indication (pain). Some communications by Warner-Lambert constituted unjustified threats under section 70 of the Patents Act 1977.

Court Disposition

Patent revoked for insufficiency and obviousness; infringement claim dismissed; some threats found unjustified.

Orders

  • Revocation of European Patent (UK) No. 0 934 061
  • Dismissal of Warner-Lambert's infringement claims against Actavis