Actavis Group PTC EHF & Anor v Eli Lilly and Company [2015] EWHC 3294 (Pat) (16 November 2015)

Actavis Group PTC EHF & Anor v Eli Lilly and Company [2015] EWHC 3294 (Pat) (16 November 2015)

The patent was found invalid for lack of inventive step. The skilled team, comprising a clinician and a psychopharmacologist, would have considered it obvious to try atomoxetine for ADHD based on the common general knowledge that tricyclic antidepressants (TCAs) were effective in ADHD due to norepinephrine reuptake...

Source-derived case information.

Citation
[2015] EWHC 3294 (Pat)
Parties
Claimant: Actavis Group PTC ehf; Claimant: Actavis UK Limited; Defendant: Eli Lilly and Company
Jurisdiction
England and Wales
Judgment Date
16 November 2015
Procedural Posture
Patent Revocation and Counterclaim for Infringement / Expedited Trial, First Instance Judgment
Outcome
Patent revoked for lack of inventive step; counterclaim for infringement dismissed.
Legal Topics
Patent Validity, Inventive Step, Plausibility, Obviousness, Entitlement to Priority, Second Medical Use Claims, Pharmaceutical Patents
Intellectual Property Patents Patent Validity Inventive Step Plausibility Obviousness Entitlement to Priority Second Medical Use Claims +1 more

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Summary, issues, holding and outcome

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Parties

Actavis Group PTC ehf

Claimant

Actavis UK Limited

Claimant

Eli Lilly and Company

Defendant

Procedural Posture

Patent Revocation and Counterclaim for Infringement / Expedited Trial, First Instance Judgment

Legal Issues

  1. 1 Whether EP (UK) 0 721 777 is invalid for lack of inventive step
  2. 2 Whether the patent disclosure is plausible and sufficient
  3. 3 Whether the patent is entitled to its claimed priority date

Ratio Decidendi

The patent was found invalid for lack of inventive step. The skilled team, comprising a clinician and a psychopharmacologist, would have considered it obvious to try atomoxetine for ADHD based on the common general knowledge that tricyclic antidepressants (TCAs) were effective in ADHD due to norepinephrine reuptake inhibition, and atomoxetine was known as a selective norepinephrine reuptake inhibitor. The prior art, though not directly suggesting atomoxetine for ADHD, made its use obvious in light of the prevailing understanding. The patent's disclosure was not sufficiently plausible to support entitlement to priority. As the patent was invalid, the infringement counterclaim failed.

Court Disposition

Patent revoked for lack of inventive step; counterclaim for infringement dismissed.

Orders

  • EP (UK) 0 721 777 is revoked.
  • Actavis' claim for revocation succeeds.