Teva Pharmaceutical Industries Ltd v Istituto Gentili Spa & Ors (Rev1) [2003] EWHC 5 (Pat) (21 January 2003)

Teva Pharmaceutical Industries Ltd v Istituto Gentili Spa & Ors (Rev1) [2003] EWHC 5 (Pat) (21 January 2003)

Both patents are invalid. The 042 patent is anticipated and/or obvious over the prior art, including Blum, Kabachnik, and Fleisch, as the skilled person would have been motivated to try alendronate and related compounds for pharmaceutical use. The 292 patent is invalid as its claim is in substance to a method of treatment, excluded from patentability, and is also obvious in light of the prior art and common general knowledge, particularly the suggestions in Lunar News and the known pharmacology of alendronate.

Citation
[2003] EWHC 5 (Pat)
Parties
Claimant: Teva Pharmaceutical Industries Ltd; Claimant: Arrow Generics Ltd; Claimant: Generics (UK) Ltd; Defendant: Istituto Gentili SpA; Defendant: Merck & Co Inc
Jurisdiction
England and Wales
Judgment Date
21 January 2003
Procedural Posture
Patent Revocation and Validity Proceedings / High Court (patents Court) First Instance Judgment
Outcome
Both patents (2,118,042 and EP (UK) 0,998,292) held invalid.
Legal Topics
Patent Validity, Obviousness, Novelty, Pharmaceutical Patents, Second Medical Use Claims, Method of Treatment Exclusion
Intellectual Property Law Patent Law Patent Validity Obviousness Novelty Pharmaceutical Patents Second Medical Use Claims Method of Treatment Exclusion

Case Brief

Summary, issues, holding and outcome

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Parties

Teva Pharmaceutical Industries Ltd

Claimant

Arrow Generics Ltd

Claimant

Generics (UK) Ltd

Claimant

Istituto Gentili SpA

Defendant

Merck & Co Inc

Defendant

Procedural Posture

Patent Revocation and Validity Proceedings / High Court (patents Court) First Instance Judgment

Legal Issues

  1. 1 Whether patents 2,118,042 and EP (UK) 0,998,292 are invalid for lack of novelty and/or obviousness
  2. 2 Whether the 292 patent is invalid as a method of treatment claim under s.4(2) Patents Act 1977
  3. 3 Whether the claims are anticipated by prior art (Blum, Kabachnik, Fleisch, Lunar News)

Ratio Decidendi

Both patents are invalid. The 042 patent is anticipated and/or obvious over the prior art, including Blum, Kabachnik, and Fleisch, as the skilled person would have been motivated to try alendronate and related compounds for pharmaceutical use. The 292 patent is invalid as its claim is in substance to a method of treatment, excluded from patentability, and is also obvious in light of the prior art and common general knowledge, particularly the suggestions in Lunar News and the known pharmacology of alendronate.

Court Disposition

Both patents (2,118,042 and EP (UK) 0,998,292) held invalid.

Orders

  • Patents 2,118,042 and EP (UK) 0,998,292 are revoked.