Monsanto Company & Ors v Merck & Company & Anor [1999] EWCA Civ 1946 (23 July 1999)

Monsanto Company & Ors v Merck & Company & Anor [1999] EWCA Civ 1946 (23 July 1999)

The judge erred in striking out the patentees' alternative case as unarguable; claim 20 is at least arguable as a process claim covering use of a compound of claim 1 during any stage of preparation of a medicament; proper construction requires expert evidence and adopting the perspective of a skilled person in the art; summary disposal was inappropriate.

Citation
[1999] EWCA Civ 1946
Parties
Claimant/appellant: Monsanto Company; Claimant/appellant: GD Searle & Company; Claimant/appellant: Pfizer Inc; Defendant/respondent: Merck & Company Inc; Defendant/respondent: Merck Sharp & Dohme Limited
Jurisdiction
England and Wales
Judgment Date
23 July 1999
Procedural Posture
Patent Infringement Appeal / Appeal From High Court Order Striking Out Parts of Statement of Case
Outcome
appeal allowed
Legal Topics
Patent Claim Construction, Process Claims, Swiss Type Claims, Striking Out Pleadings, Section 60(1)(c) Patents Act 1977
Intellectual Property Patents Patent Claim Construction Process Claims Swiss Type Claims Striking Out Pleadings Section 60(1)(c) Patents Act 1977

Case Brief

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Parties

Monsanto Company

Claimant/appellant

GD Searle & Company

Claimant/appellant

Pfizer Inc

Claimant/appellant

Merck & Company Inc

Defendant/respondent

Merck Sharp & Dohme Limited

Defendant/respondent

Procedural Posture

Patent Infringement Appeal / Appeal From High Court Order Striking Out Parts of Statement of Case

Legal Issues

  1. 1 Whether paragraphs 6 and 7 of the patentees' statement of case on infringement should be struck out
  2. 2 Proper construction of claim 20 of European Patent (UK) Number 0679157
  3. 3 Whether claim 20 constitutes a process claim under section 60(1)(c) Patents Act 1977

Ratio Decidendi

The judge erred in striking out the patentees' alternative case as unarguable; claim 20 is at least arguable as a process claim covering use of a compound of claim 1 during any stage of preparation of a medicament; proper construction requires expert evidence and adopting the perspective of a skilled person in the art; summary disposal was inappropriate.

Court Disposition

appeal allowed

Orders

  • Paragraphs 6 and 7 of the patentees' statement of case reinstated
  • Appellants awarded costs here and below