Chugai Pharmaceutical Co. Ltd v UCB Pharma SA & Ors [2018] EWHC 2264 (Pat) (24 August 2018)

Chugai Pharmaceutical Co. Ltd v UCB Pharma SA & Ors [2018] EWHC 2264 (Pat) (24 August 2018)

The term 'donor' in claim 2 of the 771 patent includes conserved residues; the claim is not limited to residues changed from human to non-human. Therefore, tocilizumab falls within claim 2 and royalties are due. The claim is not a product-by-process claim. The fact that the claim would be invalid over Queen on this construction is not relevant to claim construction unless ambiguity remains, which it does not.

Citation
[2018] EWHC 2264 (Pat)
Parties
Claimant: Chugai Pharmaceutical Co. Ltd; Defendant: UCB Pharma S.A.; Defendant: Celltech R&D Limited; Defendant: UCB Biopharma SPRL
Jurisdiction
England and Wales
Judgment Date
24 August 2018
Procedural Posture
Patent Dispute / Contractual Royalties / High Court Trial, Judgment
Outcome
Claim dismissed; declaration sought by Chugai refused.
Legal Topics
Patent Claim Construction, Royalties Under Patent Licence, US Patent Law, Product by Process Claims, Interpretation of 'donor' in Antibody Patents
Intellectual Property Contract Law Patent Claim Construction Royalties Under Patent Licence US Patent Law Product by Process Claims Interpretation of 'donor' in Antibody Patents

Case Brief

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Parties

Chugai Pharmaceutical Co. Ltd

Claimant

UCB Pharma S.A.

Defendant

Celltech R&D Limited

Defendant

UCB Biopharma SPRL

Defendant

Procedural Posture

Patent Dispute / Contractual Royalties / High Court Trial, Judgment

Legal Issues

  1. 1 Whether tocilizumab falls within claim 2 of US patent 7,566,771 under US law
  2. 2 Whether 'donor' in claim 2 includes conserved residues
  3. 3 Whether the patent claim should be construed as a product-by-process claim

Ratio Decidendi

The term 'donor' in claim 2 of the 771 patent includes conserved residues; the claim is not limited to residues changed from human to non-human. Therefore, tocilizumab falls within claim 2 and royalties are due. The claim is not a product-by-process claim. The fact that the claim would be invalid over Queen on this construction is not relevant to claim construction unless ambiguity remains, which it does not.

Court Disposition

Claim dismissed; declaration sought by Chugai refused.

Orders

  • No declaration granted in favour of Chugai.
  • Royalties remain payable by Chugai to UCB for tocilizumab under the licence while the 771 patent is in force.