Arrow Generics Ltd v. Azko Nb (Organon Laboratories Ltd) [2008] ScotCS CSIH_31 (20 May 2008)

Arrow Generics Ltd v. Azko Nb (Organon Laboratories Ltd) [2008] ScotCS CSIH_31 (20 May 2008)

The court finds that claims 1-3 and 5 of European Patent EP 0 389 035 are anticipated by the Declercq 1984 article, which discloses monoclinic tibolone at the required purity and for pharmaceutical use, and that the method of crystallisation from acetone is enabled. The claims are also found to lack inventive step, as the prior art and common knowledge render the invention obvious to a skilled person. The patent is revoked in its entirety.

Citation
[2008] ScotCS CSIH_31
Parties
Petitioner and Respondent: Arrow Generics Limited; Respondent and Reclaimer: Akzo NB (Organon Laboratories Limited)
Jurisdiction
Scotland
Judgment Date
20 May 2008
Procedural Posture
Reclaiming Motion (appeal) / Court of Session, Inner House, First Division, Final Judgment
Outcome
Patent revoked
Legal Topics
Patent Revocation, Anticipation, Obviousness, Claim Construction, Enablement
Intellectual Property Patent Law Patent Revocation Anticipation Obviousness Claim Construction Enablement

Case Brief

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Parties

Arrow Generics Limited

Petitioner and Respondent

Akzo NB (Organon Laboratories Limited)

Respondent and Reclaimer

Procedural Posture

Reclaiming Motion (appeal) / Court of Session, Inner House, First Division, Final Judgment

Legal Issues

  1. 1 Whether claims 1-3 and 5 of European Patent EP 0 389 035 are anticipated by prior art (Declercq 1984)
  2. 2 Whether the claims lack inventive step (obviousness)
  3. 3 Proper construction of patent claims regarding pharmaceutical composition and crystalline purity

Ratio Decidendi

The court finds that claims 1-3 and 5 of European Patent EP 0 389 035 are anticipated by the Declercq 1984 article, which discloses monoclinic tibolone at the required purity and for pharmaceutical use, and that the method of crystallisation from acetone is enabled. The claims are also found to lack inventive step, as the prior art and common knowledge render the invention obvious to a skilled person. The patent is revoked in its entirety.

Court Disposition

Patent revoked

Orders

  • Claims 1-3 and 5 of European Patent EP 0 389 035 are invalid for anticipation and lack of inventive step
  • Patent revoked in its entirety