Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat) (20 November 2009)

Teva UK Ltd v Merck & Co, Inc [2009] EWHC 2952 (Pat) (20 November 2009)

The unamended claims are invalid for lack of novelty and obviousness over the Nardin prior art, as the claims are not limited to co-formulation and the identity of MK 507 (dorzolamide) would have been readily ascertained by the skilled person. The proposed amendment to claim 1 to limit it to co-formulation does not add matter and is allowable. However, the proposed amendment to claim 18 (limiting pH range to 5.5-6.0) adds matter by intermediate generalisation and is not allowable. The unamended claim 18 is invalid for added matter. The patent as proposed to be amended is invalid for obviousness over Nardin and common general knowledge.

Citation
[2009] EWHC 2952 (Pat)
Parties
Claimant: Teva UK Limited; Defendant: Merck & Co., Inc
Jurisdiction
England and Wales
Judgment Date
20 November 2009
Procedural Posture
Patent Revocation and Amendment Application / First Instance Judgment
Outcome
Patent revoked; amendments refused in part; all claims in issue held invalid.
Legal Topics
Patent Validity, Obviousness, Added Matter, Insufficiency, Amendment of Patent Claims
Intellectual Property Patents Patent Validity Obviousness Added Matter Insufficiency Amendment of Patent Claims

Case Brief

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Parties

Teva UK Limited

Claimant

Merck & Co., Inc

Defendant

Procedural Posture

Patent Revocation and Amendment Application / First Instance Judgment

Legal Issues

  1. 1 Whether the patent as granted and as proposed to be amended is invalid for obviousness in light of prior art and common general knowledge
  2. 2 Whether the amendments sought add matter and are allowable
  3. 3 Whether the patent is insufficient

Ratio Decidendi

The unamended claims are invalid for lack of novelty and obviousness over the Nardin prior art, as the claims are not limited to co-formulation and the identity of MK 507 (dorzolamide) would have been readily ascertained by the skilled person. The proposed amendment to claim 1 to limit it to co-formulation does not add matter and is allowable. However, the proposed amendment to claim 18 (limiting pH range to 5.5-6.0) adds matter by intermediate generalisation and is not allowable. The unamended claim 18 is invalid for added matter. The patent as proposed to be amended is invalid for obviousness over Nardin and common general knowledge.

Court Disposition

Patent revoked; amendments refused in part; all claims in issue held invalid.

Orders

  • Patent revoked as invalid for lack of novelty and obviousness.
  • Amendment to claim 1 allowed; amendment to claim 18 refused.