Teva UK Ltd v Merck & Co, Inc

Teva UK Ltd v Merck & Co, Inc

The patent, as proposed to be amended, is invalid for lack of inventive step because the skilled team, motivated by the Nardin prior art and common general knowledge, would have found it obvious to co-formulate dorzolamide and timolol for treating glaucoma. The amendments to claim 18 add matter and are not allowable. The patent is also insufficient if it is not obvious, as the disclosure does not enable the invention more than the prior art.

Parties
Claimant: Teva UK Limited; Defendant: Merck & Co., Inc
Jurisdiction
England and Wales
Judgment Date
20 November 2009
Procedural Posture
Patent Revocation / Judgment After Trial
Outcome
Patent revoked for lack of inventive step; amendment to claim 18 refused for added matter; amendment to claim 1 would have been allowed if patent valid.
Legal Topics
Obviousness, Added Matter, Insufficiency, Amendment of Patent Claims, Novelty
Intellectual Property Patents Obviousness Added Matter Insufficiency Amendment of Patent Claims Novelty

Case Brief

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Parties

Teva UK Limited

Claimant

Merck & Co., Inc

Defendant

Procedural Posture

Patent Revocation / Judgment After Trial

Legal Issues

  1. 1 Whether the patent is invalid for obviousness over prior art and common general knowledge
  2. 2 Whether the proposed amendments add matter
  3. 3 Whether the patent is insufficiently disclosed

Ratio Decidendi

The patent, as proposed to be amended, is invalid for lack of inventive step because the skilled team, motivated by the Nardin prior art and common general knowledge, would have found it obvious to co-formulate dorzolamide and timolol for treating glaucoma. The amendments to claim 18 add matter and are not allowable. The patent is also insufficient if it is not obvious, as the disclosure does not enable the invention more than the prior art.

Court Disposition

Patent revoked for lack of inventive step; amendment to claim 18 refused for added matter; amendment to claim 1 would have been allowed if patent valid.

Orders

  • Patent revoked
  • Amendment to claim 18 refused