Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor [2008] EWHC 2413 (Pat) (15 October 2008)

Generics (UK) Ltd v Daiichi Pharmaceutical Co Ltd & Anor [2008] EWHC 2413 (Pat) (15 October 2008)

The patent claims in issue were found invalid for lack of inventive step (obviousness) in light of the prior art and common general knowledge. The SPC was also found invalid as it depended on the validity of the patent claims. The court held that the skilled team would have found it obvious to resolve ofloxacin into its enantiomers and arrive at levofloxacin using known techniques and motivations in the field at the priority date.

Citation
[2008] EWHC 2413 (Pat)
Parties
Claimant: Generics (UK) Limited; Defendant: Daiichi Pharmaceutical Co. Ltd; Defendant: Daiichi Sankyo Co. Ltd
Jurisdiction
England and Wales
Judgment Date
15 October 2008
Procedural Posture
Patent Invalidity and SPC Rectification Action / First Instance Judgment
Outcome
Patent claims 1-2 and 5-7 declared invalid; SPC/GB97/085 declared invalid.
Legal Topics
Patent Validity, Supplementary Protection Certificate (spc), Novelty, Obviousness, Added Matter, Insufficiency
Intellectual Property Pharmaceutical Law Patent Validity Supplementary Protection Certificate (spc) Novelty Obviousness Added Matter Insufficiency

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Parties

Generics (UK) Limited

Claimant

Daiichi Pharmaceutical Co. Ltd

Defendant

Daiichi Sankyo Co. Ltd

Defendant

Procedural Posture

Patent Invalidity and SPC Rectification Action / First Instance Judgment

Legal Issues

  1. 1 Whether claims 1-2 and 5-7 of European Patent (UK) No. 0206283 are invalid for lack of novelty, obviousness, added matter, or insufficiency
  2. 2 Whether SPC/GB97/085 is invalid or should be rectified due to invalidity or limitation of the basic patent or earlier marketing authorisations

Ratio Decidendi

The patent claims in issue were found invalid for lack of inventive step (obviousness) in light of the prior art and common general knowledge. The SPC was also found invalid as it depended on the validity of the patent claims. The court held that the skilled team would have found it obvious to resolve ofloxacin into its enantiomers and arrive at levofloxacin using known techniques and motivations in the field at the priority date.

Court Disposition

Patent claims 1-2 and 5-7 declared invalid; SPC/GB97/085 declared invalid.

Orders

  • Declaration of invalidity of claims 1-2 and 5-7 of European Patent (UK) No. 0206283
  • Declaration of invalidity of SPC/GB97/085