Mayne Pharma Ltd & Anor v Debiopharm SA & Anor [2006] EWHC 1123 (Pat) (19 May 2006)

Mayne Pharma Ltd & Anor v Debiopharm SA & Anor [2006] EWHC 1123 (Pat) (19 May 2006)

The patent claims require a distinct step of adding an alkali solution to adjust pH; Mayne's process, which uses ammonium oxalate without such addition, does not infringe. The claimed invention is obvious in light of common general knowledge and prior art, particularly the Gill & Rosenberg paper and Kidani patent, as the skilled person would empirically investigate pH to optimise yield and purity.

Citation
[2006] EWHC 1123 (Pat)
Parties
Claimant: Mayne Pharma Limited; Claimant: Mayne Pharma Plc; Defendant: Debiopharm SA; Defendant: Sanofi-Synthélabo
Jurisdiction
England and Wales
Judgment Date
19 May 2006
Procedural Posture
Patent Revocation and Non Infringement Declaration / High Court Trial Judgment
Outcome
Patent held invalid for obviousness; declaration of non-infringement granted.
Legal Topics
Patent Validity, Patent Infringement, Obviousness, Anticipation, Pharmaceutical Patents
Intellectual Property Patent Law Patent Validity Patent Infringement Obviousness Anticipation Pharmaceutical Patents

Case Brief

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Parties

Mayne Pharma Limited

Claimant

Mayne Pharma Plc

Claimant

Debiopharm SA

Defendant

Sanofi-Synthélabo

Defendant

Procedural Posture

Patent Revocation and Non Infringement Declaration / High Court Trial Judgment

Legal Issues

  1. 1 Whether EP(UK) 1308454 is valid for inventive step and not anticipated
  2. 2 Whether the process used by Mayne infringes EP(UK) 1308454
  3. 3 Construction of the patent claims regarding pH adjustment and addition of alkali

Ratio Decidendi

The patent claims require a distinct step of adding an alkali solution to adjust pH; Mayne's process, which uses ammonium oxalate without such addition, does not infringe. The claimed invention is obvious in light of common general knowledge and prior art, particularly the Gill & Rosenberg paper and Kidani patent, as the skilled person would empirically investigate pH to optimise yield and purity.

Court Disposition

Patent held invalid for obviousness; declaration of non-infringement granted.

Orders

  • Declaration of non-infringement of EP(UK) 1308454 granted to Mayne.
  • EP(UK) 1308454 held invalid for lack of inventive step (obviousness).