500th Post - Patents: Actavis UK Ltd v Novartis AG

This was a claim by Actavis for the revocation of a Novartis's European patent for a preparation which released fluvastatin (a cholesterol inhibiting drug) gradually rather than in an immediate burst on grounds of obviousness and insufficiency. There was also a counterclaim by Novartis for infringement of its patent. Novartis conceded that the claims as granted could not be granted and applied for their amendment.   The claim and counterclaim came on before Mr Justice Warren and is reported at Actavis UK Ltd v Novartis AG [2009] EWHC 41 (Ch) (16 January 2009) 

This case is important because it is one of the first cases since Conor Medsystems Inc v Angiotech Pharmaceuticals Inc amd others [2008] UKHL 49 (9 July 2008).  Mr Justice Warren reviewed that case and others such as Windsurfing International Inc. v Tabur Marine (Great Britain) Ltd [1985] RPC 59 and Pozzoli SPA v BDMO SPA [2007] FSR 872 in determining the extent to which Conor had changed the law.

Comparing the teaching of the patent to the pleaded prior art and common general knowledge the judge found that the patent was obvious. The claim on insufficiency failed.    There was no dispute that the claimant's preparation would have infringed the defendant's patent had it been valid but in view of the finding of obviousness the counterclaim failed.

This is a long case and it is very late so there may well be more new law in this than I have the energy to mention here. One passage which did strike me as being quite nifty was Mr Justice Warren's dicta on common general knowledge at paragraph [125]:

"Common general knowledge means the information which at the date of the patent in question is known and accepted without question by those who are engaged in the art or science to which the alleged invention relates. It is important to differentiate between matter which was in the public domain at the priority date of the patent and matter which can properly be regarded as common general knowledge. Evidence that a particular fact is known or even well-known to a witness does not mean that it is common general knowledge. Likewise, a piece of information disclosed in a scientific paper does not become common general knowledge merely because it is widely read. On the other hand, it is not necessary to show that the information is known in the sense that the skilled person has memorised it. Material which is known to exist and to which the skilled person would refer as a matter of course if he cannot remember it is part of the common general knowledge. See generally Terrell on the Law of Patents (16th ed) at paragraphs 6-36 to 6-38"

This case note incidentally is my 500th post.    Quite a lot has happened since I railed against criminalizing patent infringement on 22 August 2005.   As you can see from the photo I looked slightly different in those far off days.