Actavis Group PTC EHF & Anor v Teva UK Ltd & Ors

Actavis Group PTC EHF & Anor v Teva UK Ltd & Ors

Claims 1, 7, and 10 of EP (UK) 1,173,181 are invalid for lack of inventive step. The skilled but non-inventive team, following routine pre-clinical and clinical trial procedures, would have been very likely to test a 5mg daily dose of tadalafil and, upon finding it safe and efficacious, would have arrived at the...

Source-derived case information.

Parties
Appellant: Actavis Group PTC EHF; Appellant: Actavis UK Limited; Appellant: TEVA UK Limited; Appellant: TEVA Pharmaceutical Industries Limited; Appellant: Generics (UK) Limited (t/a Mylan); Respondent: ICOS Corporation; Respondent: Eli Lilly & Company
Jurisdiction
England and Wales
Judgment Date
01 November 2017
Procedural Posture
Civil Appeal / Court of Appeal Judgment
Outcome
Appeal allowed; claims 1, 7, and 10 of the 181 patent held invalid for lack of inventive step.
Legal Topics
Patent Validity, Obviousness, Novelty, Priority, Added Matter, Infringement
Intellectual Property Patents Patent Validity Obviousness Novelty Priority Added Matter Infringement

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Summary, issues, holding and outcome

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Parties

Actavis Group PTC EHF

Appellant

Actavis UK Limited

Appellant

TEVA UK Limited

Appellant

TEVA Pharmaceutical Industries Limited

Appellant

Generics (UK) Limited (t/a Mylan)

Appellant

ICOS Corporation

Respondent

Eli Lilly & Company

Respondent

Procedural Posture

Civil Appeal / Court of Appeal Judgment

Legal Issues

  1. 1 Whether claims 1, 7, and 10 of EP (UK) 1,173,181 are invalid for lack of inventive step (obviousness)
  2. 2 Whether the claims are entitled to priority
  3. 3 Whether the claims add matter beyond the application as filed

Ratio Decidendi

Claims 1, 7, and 10 of EP (UK) 1,173,181 are invalid for lack of inventive step. The skilled but non-inventive team, following routine pre-clinical and clinical trial procedures, would have been very likely to test a 5mg daily dose of tadalafil and, upon finding it safe and efficacious, would have arrived at the claimed invention. The process did not require inventive ingenuity but followed standard practice, and the surprising result did not render the process inventive.

Court Disposition

Appeal allowed; claims 1, 7, and 10 of the 181 patent held invalid for lack of inventive step.

Orders

  • Claims 1, 7, and 10 of EP (UK) 1,173,181 are revoked for lack of inventive step.
  • No order as to the validity of other claims not appealed.