Three minds, but one opinion as court dismisses Dr Reddy's appeal

The existence of last week's ruling of the Court of Appeal for England and Wales (Lord Neuberger of Abbotsbury MR, Jacob LJ and Richards LJ) in Dr Reddy's Laboratories (UK) Limited v Eli Lilly and Company Limited [2009] EWCA Civ 1362 has already been noted on this weblog, but not much has been said about its substance.

This was the appeal by Dr Reddy's against the refusal of Mr Justice Floyd (noted here by the IPKat) to revoke Eli Lilly's patent for olanzapine, an anti-psychotic agent used in the treatment of schizophrenia. According to Dr Reddy's, the patent was a pretty sick one since it suffered from (i) an acute deficiency of novelty over a prior disclosure made by Eli Lilly in an earlier patent; (ii) glaring obviousnessness over the same patent and (iii) a further bout of obviousness which had been brought about by the earlier publication of an article by one of Eli Lilly's scientists.

On appeal, Dr Reddy's argued that, although olanzapine was not mentioned specifically in the earlier patent (it being just one of the 86,000 compounds of a preferred chemical class), the patent in suit nonetheless lacked novelty because, in the language of the European Patent Convention 2000 Article 54 it formed "part of the state of the art" having been "made available to the public by means of a written... description". What's more, the validity of this patent -- which was after all only a selection patent -- had to be assessed in the light of the earlier patent, in accordance with the rules set out in re IG Farbenindustrie AG's Patents (1930) 47 RPC 289; this being so, a sub-class or individual member of a prior art published class was taken to be obvious if it was a random selection from the earlier class.Finally Dr Reddy's submitted that the judge shouldn't have rejected the evidence of its expert witness.

The Court of Appeal, for whom Lord Justice Jacob was the principal mouthpiece, dismissed the appeal. In its view

*Dr Reddy's first contention essentially meant that every disclosure of a chemical class disclosed every single member of that class. However, it made no sense to say that a generalised prior description disclosed each specific matter which fell within it.

* What the court had to look for by way of anticipation was an individualised description of the later claimed compound or class of compounds -- which was not the case here.

* To avoid a finding of anticipation, a patent for a compound or sub-class had to disclose something special about the compound or sub-class. It was most unlikely that the courts of any other member of the European Patent Union would pay any attention to English pre-1977 jurisprudence such as IG Farbenindustrie AG's Patents , which the European Patent Office (EPO) itself did not apply.

* It was better to follow the EPO and deploy the objection of obviousness where a patent had in truth made no technical advance. A patent would be obvious if it was founded on no more than an arbitrary selection from a previously disclosed class of compounds. This was because, in such circumstances, the patentee would have provided no technical contribution.

* In this case, by identifying olanzapine and disclosing what it had about its properties, Eli Lilly had not made an arbitrary selection. Accordingly the inclusion of that particular compound in its research had not been an obvious step to take.

* In reaching his decision Floyd J heard evidence from numerous witnesses and was entitled to come to the conclusion which he reached.He hadn't misunderstood the evidence or argument, failed to have regard to relevant evidence, or disregarded relevant evidence.

The IPKat thinks the Court of Appeal is dead right and welcomes its clarification of the treatment of selection patents which, when he was a kitten, seemed to him to fit most uncomfortably within the criteria of patentability once the preferred class had been identified. Merpel likes the comments made by Lord Justice Jacob on the (ir)relevance of foreign decisions, which you can find on PatLit here.

Duncan Bucknell's olanzapine scorecard here

Cats and schizophrenia here, here and here