Merz Pharma GmbH & Co. KGaA v Allergan Inc. [2006] EWHC 2686 (Pat) (30 October 2006)

Merz Pharma GmbH & Co. KGaA v Allergan Inc. [2006] EWHC 2686 (Pat) (30 October 2006)

The patent was found invalid for added matter because the claims extended to the use of the neurotoxic component, which was not disclosed in the original application. The judge held that the skilled person would not derive the subject matter of the claims directly and unambiguously from the original application. The...

Source-derived case information.

Citation
[2006] EWHC 2686 (Pat)
Parties
Claimant: Merz Pharma GmbH & Co. KGaA; Defendant: Allergan, Inc.
Jurisdiction
England and Wales
Judgment Date
30 October 2006
Procedural Posture
Patent Revocation Action / First Instance Judgment
Outcome
Patent revoked
Legal Topics
Patent Validity, Added Matter, Novelty, Obviousness, Insufficiency, Pharmaceutical Patents
Intellectual Property Patents Patent Validity Added Matter Novelty Obviousness Insufficiency Pharmaceutical Patents

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Summary, issues, holding and outcome

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Parties

Merz Pharma GmbH & Co. KGaA

Claimant

Allergan, Inc.

Defendant

Procedural Posture

Patent Revocation Action / First Instance Judgment

Legal Issues

  1. 1 Whether the patent discloses added matter beyond the original application
  2. 2 Whether the patent lacks novelty over prior art and prior use
  3. 3 Whether the patent is obvious in light of common general knowledge and prior art

Ratio Decidendi

The patent was found invalid for added matter because the claims extended to the use of the neurotoxic component, which was not disclosed in the original application. The judge held that the skilled person would not derive the subject matter of the claims directly and unambiguously from the original application. The patent was also found invalid for lack of novelty and obviousness over the prior art and prior use. The specification was held insufficient as it did not enable the skilled person to perform the invention across the full scope of the claims.

Court Disposition

Patent revoked

Orders

  • European Patent (UK) 1 366 770 is revoked.