Chugai Pharmaceutical Co. Ltd v UCB Pharma SA & Ors

Chugai Pharmaceutical Co. Ltd v UCB Pharma SA & Ors

The term 'non-human donor' in claim 2 of US patent 7,566,771 refers to the source of the residue; only residues in the framework region changed from human acceptor to non-human donor count as donor. Conserved residues do not count as donor. Therefore, tocilizumab does not fall within claim 2, and no royalties are due for tocilizumab manufactured after 13 January 2016.

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 (declaratory Relief) / Judgment After Trial
Outcome
Declaration granted in favour of Chugai; tocilizumab does not infringe a Valid Claim of US patent 7,566,771.
Legal Topics
Patent Claim Construction, Patent Infringement, Royalty Obligations, Product by Process Claims, US Patent Law Application in English Courts
Intellectual Property Contract Patent Claim Construction Patent Infringement Royalty Obligations Product by Process Claims US Patent Law Application in English Courts

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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 (declaratory Relief) / Judgment After Trial

Legal Issues

  1. 1 Whether tocilizumab falls within claim 2 of US patent 7,566,771 under US law
  2. 2 Whether royalties are due under the licence for tocilizumab manufactured after 13 January 2016
  3. 3 Proper construction of 'non-human donor' in the patent claims

Ratio Decidendi

The term 'non-human donor' in claim 2 of US patent 7,566,771 refers to the source of the residue; only residues in the framework region changed from human acceptor to non-human donor count as donor. Conserved residues do not count as donor. Therefore, tocilizumab does not fall within claim 2, and no royalties are due for tocilizumab manufactured after 13 January 2016.

Court Disposition

Declaration granted in favour of Chugai; tocilizumab does not infringe a Valid Claim of US patent 7,566,771.

Orders

  • No royalties are due for tocilizumab under the patent licence between Chugai and UCB for product manufactured after 13 January 2016.