Sandoz Ltd & Anor v G.D. Searle LLC & Anor

Sandoz Ltd & Anor v G.D. Searle LLC & Anor

The SPC complies with Article 3(a) of the SPC Regulation because darunavir is 'protected' by the Patent; it falls within the scope of the claims, and the claims specify the product by means of a Markush formula covering it. The breadth of the claim is not a basis for refusing SPC grant unless patent validity is challenged, which was not done.

Parties
Claimant: Sandoz Limited; Claimant: Hexal AG; Defendant: G. D. Searle LLC; Defendant: Janssen Sciences Ireland UC
Jurisdiction
England and Wales
Judgment Date
03 May 2017
Procedural Posture
Patent Revocation and Counterclaim for Injunction / Judgment
Outcome
Claim dismissed; SPC upheld as compliant with Article 3(a) of the SPC Regulation.
Legal Topics
Supplementary Protection Certificates, Patent Interpretation, Markush Claims, Article 3(a) SPC Regulation
Intellectual Property Pharmaceutical Law Supplementary Protection Certificates Patent Interpretation Markush Claims Article 3(a) SPC Regulation

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 3 Authorities cited 13 Party arguments 2 Amounts and remedies 3
Sign in to unlock

Parties

Sandoz Limited

Claimant

Hexal AG

Claimant

G. D. Searle LLC

Defendant

Janssen Sciences Ireland UC

Defendant

Procedural Posture

Patent Revocation and Counterclaim for Injunction / Judgment

Legal Issues

  1. 1 Whether darunavir is 'protected' by the basic patent within Article 3(a) of the SPC Regulation
  2. 2 Whether a Markush claim specifies or identifies a product for SPC purposes

Ratio Decidendi

The SPC complies with Article 3(a) of the SPC Regulation because darunavir is 'protected' by the Patent; it falls within the scope of the claims, and the claims specify the product by means of a Markush formula covering it. The breadth of the claim is not a basis for refusing SPC grant unless patent validity is challenged, which was not done.

Court Disposition

Claim dismissed; SPC upheld as compliant with Article 3(a) of the SPC Regulation.

Orders

  • Claimants' claim for revocation of SPC dismissed.
  • Further argument to be heard on relief for Defendants' counterclaim for injunction.