Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Anor

Merck Sharp & Dohme Ltd v Ono Pharmaceutical Co Ltd & Anor

The patent is valid. Claims 1 and 3 are novel over Dana Farber 557 and Wyeth 499 because those documents do not enable or plausibly disclose the claimed therapeutic effect. The claims are sufficiently disclosed and supported by the priority document, which makes it plausible that anti-PD-1 antibodies can treat cancer generally. The invention involves an inventive step over the Latchman paper and Dana Farber 557 because the skilled person would not have had a fair expectation of success; the mouse tumour model results were exciting and not predictable from the prior art. The claims do not add matter and are not obvious. The patent's technical contribution is commensurate with the breadth...

Parties
Claimant: Merck Sharp & Dohme Limited; Defendant: Ono Pharmaceutical Co. Limited; Defendant: Tasuku Honjo; Claimant: Bristol Myers Squibb Company; Defendant: Merck & Co. Inc.
Jurisdiction
England and Wales
Judgment Date
22 October 2015
Procedural Posture
Patent / Judgment
Outcome
Patent claims upheld as valid; judgment for Ono.
Legal Topics
Patent Validity, Novelty, Inventive Step, Sufficiency, Priority, Added Matter, Obviousness
Intellectual Property Patents Patent Validity Novelty Inventive Step Sufficiency Priority Added Matter +1 more

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Parties

Merck Sharp & Dohme Limited

Claimant

Ono Pharmaceutical Co. Limited

Defendant

Tasuku Honjo

Defendant

Bristol Myers Squibb Company

Claimant

Merck & Co. Inc.

Defendant

Procedural Posture

Patent / Judgment

Legal Issues

  1. 1 Whether claims 1 and 3 of EP (UK) 1 537 878 are novel over prior art (Dana Farber 557, Wyeth 499)
  2. 2 Whether claims 1 and 3 involve an inventive step over the Latchman paper and other cited art
  3. 3 Whether the claims are sufficiently disclosed and supported by the priority document

Ratio Decidendi

The patent is valid. Claims 1 and 3 are novel over Dana Farber 557 and Wyeth 499 because those documents do not enable or plausibly disclose the claimed therapeutic effect. The claims are sufficiently disclosed and supported by the priority document, which makes it plausible that anti-PD-1 antibodies can treat cancer generally. The invention involves an inventive step over the Latchman paper and Dana Farber 557 because the skilled person would not have had a fair expectation of success; the mouse tumour model results were exciting and not predictable from the prior art. The claims do not add matter and are not obvious. The patent's technical contribution is commensurate with the breadth...

Court Disposition

Patent claims upheld as valid; judgment for Ono.