Hospira UK Ltd v Genentech Inc

Hospira UK Ltd v Genentech Inc

All proposed amendments introduce added matter, extend the scope of protection, and lack inventive step. Product by process claims are not allowable as amendments under EPO principles. Claims 2 of 628 and 2 and 4 of 119 do not lack clarity, but all claims in issue lack inventive step and cannot be allowed.

Parties
Claimant: Hospira UK Limited; Defendant: Genentech Inc.
Jurisdiction
England and Wales
Judgment Date
21 November 2014
Procedural Posture
Patent / Final Judgment
Outcome
EP (UK) 2 275 119 revoked; EP (UK) 1 516 628 amended to delete claims 1 to 6, leaving claims 7 to 11 to be renumbered; judgment for Hospira.
Legal Topics
Patent Amendment, Obviousness, Added Matter, Product by Process Claims, Extension of Scope, Clarity, Insufficiency
Intellectual Property Patents Patent Amendment Obviousness Added Matter Product by Process Claims Extension of Scope Clarity +1 more

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Parties

Hospira UK Limited

Claimant

Genentech Inc.

Defendant

Procedural Posture

Patent / Final Judgment

Legal Issues

  1. 1 Whether the proposed amendments to EP (UK) 1 516 628 and EP (UK) 2 275 119 patents are allowable
  2. 2 Whether the claims lack inventive step
  3. 3 Whether the amendments introduce added matter

Ratio Decidendi

All proposed amendments introduce added matter, extend the scope of protection, and lack inventive step. Product by process claims are not allowable as amendments under EPO principles. Claims 2 of 628 and 2 and 4 of 119 do not lack clarity, but all claims in issue lack inventive step and cannot be allowed.

Court Disposition

EP (UK) 2 275 119 revoked; EP (UK) 1 516 628 amended to delete claims 1 to 6, leaving claims 7 to 11 to be renumbered; judgment for Hospira.

Orders

  • EP (UK) 2 275 119 revoked
  • EP (UK) 1 516 628 amended to delete claims 1 to 6, leaving claims 7 to 11 to be renumbered