BASF Ag v Smithkline Beecham Plc [2002] EWHC 1373 (Patents) (12 July 2002)

BASF Ag v Smithkline Beecham Plc [2002] EWHC 1373 (Patents) (12 July 2002)

Claims 1, 2, 10, and 11 of the patent are not anticipated by the prior art because the prior disclosure does not contain a clear and unambiguous teaching of the claimed invention, nor does following its directions inevitably result in the claimed anhydrate substantially free of bound organic solvent. However, claims 3 and 7 are anticipated by the prior art (GB 85-26407) as the acetone solvate process disclosed therein inevitably produces the claimed Form A anhydrate in needle form. The construction of 'substantially free of bound organic solvent' is to be read in context as relating to the organic solvent or solvents as appropriate, not limited to propan-2-ol. The patent is not invalid...

Citation
[2002] EWHC 1373 (Patents)
Parties
Claimant: BASF AG; Defendant: SmithKline Beecham PLC
Jurisdiction
England and Wales
Judgment Date
12 July 2002
Procedural Posture
Patent Revocation Action / First Instance Trial Judgment
Outcome
Partial revocation of patent claims; claims 3 and 7 revoked for anticipation, other challenged claims upheld.
Legal Topics
Patent Validity, Anticipation, Obviousness, Claim Construction, Pharmaceutical Patents
Intellectual Property Patents Patent Validity Anticipation Obviousness Claim Construction Pharmaceutical Patents

Case Brief

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Parties

BASF AG

Claimant

SmithKline Beecham PLC

Defendant

Procedural Posture

Patent Revocation Action / First Instance Trial Judgment

Legal Issues

  1. 1 Whether claims 1, 2, 3, 7, 10, and 11 of UK patent GB 2297550 are anticipated by prior art (GB 85-26407)
  2. 2 Whether the claims are obvious in light of the prior art
  3. 3 Proper construction of 'substantially free of bound organic solvent' and related claim terms

Ratio Decidendi

Claims 1, 2, 10, and 11 of the patent are not anticipated by the prior art because the prior disclosure does not contain a clear and unambiguous teaching of the claimed invention, nor does following its directions inevitably result in the claimed anhydrate substantially free of bound organic solvent. However, claims 3 and 7 are anticipated by the prior art (GB 85-26407) as the acetone solvate process disclosed therein inevitably produces the claimed Form A anhydrate in needle form. The construction of 'substantially free of bound organic solvent' is to be read in context as relating to the organic solvent or solvents as appropriate, not limited to propan-2-ol. The patent is not invalid...

Court Disposition

Partial revocation of patent claims; claims 3 and 7 revoked for anticipation, other challenged claims upheld.

Orders

  • Claims 3 and 7 of UK patent GB 2297550 are revoked for lack of novelty (anticipation).
  • Claims 1, 2, 10, and 11 are not anticipated and remain valid.