Idenix Pharmaceuticals Inc v Gilead Sciences Inc & Ors

Idenix Pharmaceuticals Inc v Gilead Sciences Inc & Ors

The patent claims were invalid for lack of inventive step and insufficiency because it was not plausible, on the basis of the specification and common general knowledge, that substantially all claimed compounds would have anti-Flaviviridae activity, and the patent did not enable the skilled person to make the claimed compounds without undue burden. The proposed amendments would have added matter not disclosed in the application. The High Court's findings were upheld and the appeal dismissed.

Parties
Appellant: Idenix Pharmaceuticals Inc; Respondent: Gilead Sciences Inc; Respondent: Gilead Sciences Ltd; Respondent: Centre National de la Recherche Scientifique; Respondent: Università Degli Studi di Cagliari; Respondent: L’Université de Montpellier II
Jurisdiction
England and Wales
Judgment Date
08 November 2016
Procedural Posture
Civil Appeal (intellectual Property/patents) / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed. Patent claims held invalid for lack of inventive step, insufficiency, and added matter. Proposed amendments refused.
Legal Topics
Patent Validity, Obviousness, Insufficiency, Added Matter, Novelty, Priority Entitlement
Intellectual Property Patents Patent Validity Obviousness Insufficiency Added Matter Novelty Priority Entitlement

Case Brief

Summary, issues, holding and outcome

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Parties

Idenix Pharmaceuticals Inc

Appellant

Gilead Sciences Inc

Respondent

Gilead Sciences Ltd

Respondent

Centre National de la Recherche Scientifique

Respondent

Università Degli Studi di Cagliari

Respondent

L’Université de Montpellier II

Respondent

Procedural Posture

Civil Appeal (intellectual Property/patents) / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether the patent claims were invalid for lack of inventive step (obviousness)
  2. 2 Whether the patent was insufficiently disclosed (insufficiency)
  3. 3 Whether the patent claims added matter beyond the application as filed

Ratio Decidendi

The patent claims were invalid for lack of inventive step and insufficiency because it was not plausible, on the basis of the specification and common general knowledge, that substantially all claimed compounds would have anti-Flaviviridae activity, and the patent did not enable the skilled person to make the claimed compounds without undue burden. The proposed amendments would have added matter not disclosed in the application. The High Court's findings were upheld and the appeal dismissed.

Court Disposition

Appeal dismissed. Patent claims held invalid for lack of inventive step, insufficiency, and added matter. Proposed amendments refused.

Orders

  • Appeal dismissed
  • Patent claims held invalid for lack of inventive step and insufficiency