Teva Pharmaceutical Industries Ltd & Anor v Merrell Pharmaceuticals Inc & Anor

Teva Pharmaceutical Industries Ltd & Anor v Merrell Pharmaceuticals Inc & Anor

The patents in suit are invalid for lack of novelty and/or inventive step. The prior art (Carr) clearly disclosed the use of the acid metabolite as an antihistamine, and the skilled team would have found it obvious to develop the acid metabolite for use as a medicament for allergic rhinitis and urticaria, including by conducting routine tests to confirm safety and efficacy. The avoidance of cardiac side effects is a discovery, not an invention, and does not confer novelty or inventive step. The claims do not disclose any technical advance beyond what was obvious to the skilled person at the priority date.

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 / Judgment After Trial
Outcome
Patents revoked for lack of novelty and/or inventive step
Legal Topics
Patent Validity, Obviousness, Novelty, Second Medical Use Claims, Pharmaceutical Patents
Intellectual Property Law Patent Law Patent Validity Obviousness Novelty Second Medical Use Claims 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 / Judgment After Trial

Legal Issues

  1. 1 Whether the patents in suit lack novelty over prior art (Carr)
  2. 2 Whether the patents in suit are obvious in light of common general knowledge and prior art
  3. 3 Whether the patents in suit are invalid for lack of inventive step

Ratio Decidendi

The patents in suit are invalid for lack of novelty and/or inventive step. The prior art (Carr) clearly disclosed the use of the acid metabolite as an antihistamine, and the skilled team would have found it obvious to develop the acid metabolite for use as a medicament for allergic rhinitis and urticaria, including by conducting routine tests to confirm safety and efficacy. The avoidance of cardiac side effects is a discovery, not an invention, and does not confer novelty or inventive step. The claims do not disclose any technical advance beyond what was obvious to the skilled person at the priority date.

Court Disposition

Patents revoked for lack of novelty and/or inventive step

Orders

  • Claims 1, 5 and 12 of 976, claim 1 of 443, and claims 1 and 3 of 860 are invalid as lacking novelty.
  • Claims 1, 5 and 12 of 976, claim 1 of 443, claims 1 and 3 of 860, and claim 12 of 443 are invalid for lack of inventive step.