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Wednesday, 25 July 2007

Lipitor-on-the-Liffey

The IPKat has just heard today from his Irish friend David Brophy (FR Kelly, Dublin), who tells him that the Irish High Court has issued the latest judgement -- alas not yet published -- in the multi-jurisdiction Lipitor litigation between Pfizer and Ranbaxy. The court came down in favour of Pfizer (or more precisely, in favour of Warner-Lambert Company, the Irish patentee). David writes:

"The proceedings concerned Ranbaxy’s application before Mr Justice Clarke for a declaration of non-infringement of Warner-Lambert’s patent. There was no challenge in these proceedings to the validity of the patent. Apart from its inherent interest in notching up another victory for Pfizer, the Irish judgment is of particular significance because of the rarity of fully contested Irish patent cases on infringement issues. It provides practitioners with long-awaited guidance on claim construction, considering that the last published High Court decision in this regard is believed to be the Wavin Pipes decision which can be found in the 1982 Fleet Street Reports, and which predates Ireland’s adherence to the European Patent Convention and the famous Article 69 protocol.

In what is a very comprehensive and polished decision, Mr Justice Clarke endorses the decision of the UK House of Lords in Kirin-Amgen (see IPKat note here) and follows with approval the decision of the Court of Appeal in the corresponding English proceedings between the parties.

In an aside, the judge notes that Ranbaxy were represented in part by counsel from London who had acted in the same UK proceedings, but who argued that the English Court of Appeal had misconstrued Kirin-Amgen. Mr Justice Clarke said “The irony of London counsel inviting me to hold that the English Court of Appeal was wrong, while Dublin counsel argued that it was right, is not lost on me.”

He went on to note that he nevertheless had to form his own view as to the proper principles applicable as a matter of Irish law. In this regard, he held that the courts should avoid a formal claim interpretation which “no rational Patentee would have intended” but stated that this does not go so far as to unduly favour an interpretation which might be perceived to be more commercially beneficial from the perspective of the patentee.

On the technical issues, he noted the express exclusion of the cis-isomers, and following an analysis of the description and claims he concluded that he could not find compelling good reasons why the skilled person would have interpreted the claim to be limited to the racemic trans mixture or indeed to one or other trans enantiomer. He concluded therefore that claim 1 included both individual trans enantiomers and also any mixture thereof. It thus followed that Ranbaxy’s product, being based on the R-trans enantiomer, infringes the patent".

The IPKat thanks David for this information and looks forward to seeing the decision once it is available in full.

Duncan Bucknell's Lipitor scorecard patent litigation scorecard here
Irish Patents Office here

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