Teva Pharmaceutical Industries Ltd & Anor v Merrell Pharmaceuticals Inc & Anor [2007] EWHC 2276 (Ch) (12 October 2007)

Teva Pharmaceutical Industries Ltd & Anor v Merrell Pharmaceuticals Inc & Anor [2007] EWHC 2276 (Ch) (12 October 2007)

The patents in suit are invalid for obviousness. By 1992, it was obvious to the skilled person, in light of the Monahan paper, 1992 PDR, Chen, Carr, and common general knowledge, that the acid metabolite of terfenadine (fexofenadine) could be used as an antihistamine to avoid cardiac side effects associated with terfenadine, particularly in hepatically impaired patients. The technical content of the patents was preliminary and did not disclose an inventive step. Swiss form claims are not novel or inventive where the therapeutic use is not new.

Citation
[2007] EWHC 2276 (Ch)
Parties
Claimant: TEVA PHARMACEUTICAL INDUSTRIES LIMITED; Claimant: TEVA UK LIMITED; Defendant: MERRELL PHARMACEUTICALS INC; Defendant: AVENTIS INC.; Defendant: SEPRACOR INC.
Jurisdiction
England and Wales
Judgment Date
12 October 2007
Procedural Posture
Patent Revocation and Validity Proceedings / High Court Trial Judgment
Outcome
Patents revoked for invalidity (obviousness).
Legal Topics
Patent Validity, Obviousness, Novelty, Swiss Form Claims, Second Medical Use, Pharmaceutical Patents
Intellectual Property Law Patent Law Patent Validity Obviousness Novelty Swiss Form Claims Second Medical Use Pharmaceutical Patents

Case Brief

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Parties

TEVA PHARMACEUTICAL INDUSTRIES LIMITED

Claimant

TEVA UK LIMITED

Claimant

MERRELL PHARMACEUTICALS INC

Defendant

AVENTIS INC.

Defendant

SEPRACOR INC.

Defendant

Procedural Posture

Patent Revocation and Validity Proceedings / High Court Trial Judgment

Legal Issues

  1. 1 Whether the patents in suit (relating to the use of the acid metabolite of terfenadine, fexofenadine, for antihistaminic treatment) are invalid for obviousness or lack of novelty over prior art and common general knowledge; whether Swiss form claims are valid under UK law; whether the patents disclose an invention or a mere discovery.

Ratio Decidendi

The patents in suit are invalid for obviousness. By 1992, it was obvious to the skilled person, in light of the Monahan paper, 1992 PDR, Chen, Carr, and common general knowledge, that the acid metabolite of terfenadine (fexofenadine) could be used as an antihistamine to avoid cardiac side effects associated with terfenadine, particularly in hepatically impaired patients. The technical content of the patents was preliminary and did not disclose an inventive step. Swiss form claims are not novel or inventive where the therapeutic use is not new.

Court Disposition

Patents revoked for invalidity (obviousness).

Orders

  • All claims of the patents in suit (EP (UK) 0 639 976, 0 701 443, 0 815 860) are revoked.
  • Costs to be determined.