H Lundbeck A/S v Generics (UK) Ltd & Ors

H Lundbeck A/S v Generics (UK) Ltd & Ors

Claims 1 and 3 are not anticipated by the prior art because disclosure of the racemate does not disclose the isolated enantiomer. The diol route was not obvious as the skilled person would not have had a real prospect of success. For sufficiency, a product claim is enabled if at least one method is disclosed, regardless of whether the inventive step lies in the process. The judge erred in holding claims 1 and 3 insufficient; the appeal is allowed.

Parties
Appellant: H. Lundbeck A/S; Respondent: Generics (UK) Limited; Respondent: Arrow Generics Limited; Respondent: Teva UK Limited and Teva Pharmaceuticals Limited
Jurisdiction
England and Wales
Judgment Date
10 April 2008
Procedural Posture
Civil Appeal (patent) / Court of Appeal Judgment
Outcome
Appeal allowed; cross-appeal dismissed
Legal Topics
Novelty, Obviousness, Sufficiency, Product Claims, Pharmaceutical Patents
Intellectual Property Patents Novelty Obviousness Sufficiency Product Claims Pharmaceutical Patents

Case Brief

Summary, issues, holding and outcome

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Parties

H. Lundbeck A/S

Appellant

Generics (UK) Limited

Respondent

Arrow Generics Limited

Respondent

Teva UK Limited and Teva Pharmaceuticals Limited

Respondent

Procedural Posture

Civil Appeal (patent) / Court of Appeal Judgment

Legal Issues

  1. 1 Whether claims 1 and 3 of Lundbeck's patent lack novelty due to prior disclosure of the racemate
  2. 2 Whether claims 1, 3, and 6 are invalid for obviousness
  3. 3 Whether claims 1 and 3 are invalid for insufficiency as they claim the enantiomer by any method but disclose only two methods

Ratio Decidendi

Claims 1 and 3 are not anticipated by the prior art because disclosure of the racemate does not disclose the isolated enantiomer. The diol route was not obvious as the skilled person would not have had a real prospect of success. For sufficiency, a product claim is enabled if at least one method is disclosed, regardless of whether the inventive step lies in the process. The judge erred in holding claims 1 and 3 insufficient; the appeal is allowed.

Court Disposition

Appeal allowed; cross-appeal dismissed

Orders

  • Lundbeck's appeal against revocation of claims 1 and 3 is allowed; claims 1 and 3 are upheld.
  • Respondents' appeals against the refusal to revoke claim 6 are dismissed.