Hospira UK Ltd & Anor v Novartis AG [2013] EWHC 516 (Pat) (15 March 2013)

Hospira UK Ltd & Anor v Novartis AG [2013] EWHC 516 (Pat) (15 March 2013)

The patents are not entitled to priority from PD2 because the claimed invention was not clearly and unambiguously disclosed therein. Consequently, the patents are invalid in light of the intervening publication (Reid). Even if priority were established, the claimed inventions are obvious over the prior art (Boutsen) and, in some respects, insufficiently disclosed. The skilled team would not regard the claimed regimen as inventive or sufficiently enabled based on the common general knowledge and the disclosures in the prior art.

Citation
[2013] EWHC 516 (Pat)
Parties
Claimant: Hospira UK Limited; Claimant: Generics (U.K.) Limited trading as Mylan; Defendant: Novartis AG
Jurisdiction
England and Wales
Judgment Date
15 March 2013
Procedural Posture
Patent Revocation and Validity Proceedings / High Court Judgment
Outcome
Patents revoked
Legal Topics
Patent Validity, Obviousness, Priority Entitlement, Insufficiency, Pharmaceutical Patents, Osteoporosis Treatment
Intellectual Property Law Patent Law Patent Validity Obviousness Priority Entitlement Insufficiency Pharmaceutical Patents Osteoporosis Treatment

Case Brief

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Parties

Hospira UK Limited

Claimant

Generics (U.K.) Limited trading as Mylan

Claimant

Novartis AG

Defendant

Procedural Posture

Patent Revocation and Validity Proceedings / High Court Judgment

Legal Issues

  1. 1 Whether the patents are entitled to priority from the second priority document (PD2)
  2. 2 Whether the claimed inventions are obvious over the prior art (Boutsen)
  3. 3 Whether the claims are invalid for insufficiency

Ratio Decidendi

The patents are not entitled to priority from PD2 because the claimed invention was not clearly and unambiguously disclosed therein. Consequently, the patents are invalid in light of the intervening publication (Reid). Even if priority were established, the claimed inventions are obvious over the prior art (Boutsen) and, in some respects, insufficiently disclosed. The skilled team would not regard the claimed regimen as inventive or sufficiently enabled based on the common general knowledge and the disclosures in the prior art.

Court Disposition

Patents revoked

Orders

  • European Patents (UK) Nos. 1 296 689 and 1 591 122 are revoked for lack of entitlement to priority, obviousness, and insufficiency.