Norton (Waterford) Ltd v Bristol-Myers Squibb Holdings Ireland UnLtd Company (Approved) [2024] IECA 287 (28 November 2024)

Norton (Waterford) Ltd v Bristol-Myers Squibb Holdings Ireland UnLtd Company (Approved) [2024] IECA 287 (28 November 2024)

The appeal was allowed because the High Court failed to make necessary findings of fact on the central technical dispute, failed to adequately engage with the expert evidence, and did not provide sufficient reasons for its decision. The matter must be remitted for rehearing before a different judge, who will apply the definitive test for plausibility as set out by the Enlarged Board of Appeal in G2/21 Sumitomo.

Citation
[2024] IECA 287
Parties
Respondent/appellant: Bristol-Myers Squibb Holdings Ireland Unlimited Company; Petitioner/respondent: Norton (Waterford) Limited t/a Teva Pharmaceuticals Ireland
Jurisdiction
Ireland
Judgment Date
28 November 2024
Procedural Posture
Patent Revocation Appeal / Appeal From High Court to Court of Appeal
Outcome
Appeal allowed; High Court decision set aside; matter remitted for rehearing before a different judge.
Legal Topics
Patent Validity, Plausibility Requirement, Supplementary Protection Certificate, Inventive Step, Sufficiency of Disclosure
Intellectual Property Patent Law Patent Validity Plausibility Requirement Supplementary Protection Certificate Inventive Step Sufficiency of Disclosure

Case Brief

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Parties

Bristol-Myers Squibb Holdings Ireland Unlimited Company

Respondent/appellant

Norton (Waterford) Limited t/a Teva Pharmaceuticals Ireland

Petitioner/respondent

Procedural Posture

Patent Revocation Appeal / Appeal From High Court to Court of Appeal

Legal Issues

  1. 1 Whether the High Court erred in finding the patent invalid for lack of plausibility
  2. 2 Whether the correct legal test for plausibility was applied
  3. 3 Whether the trial judge failed to make necessary findings of fact and give adequate reasons

Ratio Decidendi

The appeal was allowed because the High Court failed to make necessary findings of fact on the central technical dispute, failed to adequately engage with the expert evidence, and did not provide sufficient reasons for its decision. The matter must be remitted for rehearing before a different judge, who will apply the definitive test for plausibility as set out by the Enlarged Board of Appeal in G2/21 Sumitomo.

Court Disposition

Appeal allowed; High Court decision set aside; matter remitted for rehearing before a different judge.

Orders

  • The decision of the High Court is set aside.
  • The matter is remitted to the High Court for rehearing before a different judge.