The team is joined by: GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopoulou, Mathilde Pavis, and Eibhlin Vardy; by InternKats Ieva Giedrimaite, Rose Hughes, and Cecilia Sbrolli; and by Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Tuesday, 2 December 2014

Idenix v Gilead - Patent profoundly invalid

If you heard the sound of groaning on Monday morning, it was probably this Kat's desk struggling to support the immensity of the latest offering of Mr Justice Arnold, adjudicating a leviathan struggle between Idenix and Gilead.  The judgment is available here on BAILII, and the case is properly called Idenix Pharmaceutical, Inc v Gilead Sciences, Inc & Ors [2014] EWHC 3916 (Pat) (01 December 2014).

The technical field is treatments for Hepatitis C; the specific area is nucleoside analogues having alleged activity against Hepatitis C Virus and other viruses of the Flaviviridae family.  Infringement by sofosbuvir (which Gilead markets under the trade mark Sovaldi) is swiftly established in 10 paragraphs at almost the end of a 621-paragraph whopper - Gilead is held to have infringed.  The real battle ground was validity.  Within this were a number of interesting and unusual aspects, all contributing to an overwhelming finding of invalidity of Idenix's patent - EP 1523489.

This moggy would like to begin with a number of personal observations.  He has noticed in life that first the trainee patent attorneys look young, then the qualified ones, then the policeman, and now the judges.  But for the first time he has noticed in a patent judgment expert witnesses - expert ones! - who graduated substantially after he did. In this case we have Dr Andrea Brancale receiving his PhD in 2001, and Dr Alistair Stewart receiving his DPhil in 2003.  That is in this millennium!  This Kat was happy to learn that Dr Stewart's DPhil supervisor was his very own internal examiner, Professor George Fleet.  (In the interests of full disclosure, this Kat also notes that Gilead has been a client of his at his former firm).

The patent as granted was held to lack novelty over Gilead's own International Patent Application PCT/US2004/012472 ("the Pharmasset PCT" - Pharmasset having been acquired by Gilead in 2012).  What was interesting here was that this was a novelty only citation, and then only if it was entitled to its claimed priority - its priority date was earlier than the Idenix filing date (Idenix's own priority claim was not asserted) but its filing date later, and it was published after the Idenix filing date.

The US priority application was filed in the name of Mr Clark, who was employed by Pharmasset Georgia (and another inventor who was later removed); the PCT application was filed in the name of Pharmasset Barbados. Gilead claimed that Pharmasset Barbados was the successor in title to Mr Clark the inventor, and thus able validly to claim priority under the Paris Convention, by virtue of the employment contract of Mr Clark, and an agreement between the two Pharmasset companies.  This involved a complicated factual and legal inquiry, under US Federal and Georgia State law, into the effect of these agreements.

Gilead prevailed, the priority right was upheld, and under these circumstances lack of novelty of the claims as granted was conceded.  What troubles this Kat is that Gilead were only able to prove this because it was their prior application - what would have happened if this had belonged to a completely independent third party?  How would the validity of the priority right then have been established?

Inventive step
The claims as granted were held to lack inventive step as not contributing to the state of the art, because it was not plausible that substantially all the claimed compounds would have the necessary antiviral activity.  In fact, Idenix's expert Dr Brancale had 'expressed the opinion in paragraphs 201-202 of his first report that compounds of Formula (IX) would not have been thought likely to have antiviral activity where R1 and R2 were either "straight chained, branched or cyclic alkyl" or "benzyl, wherein the phenyl group is optionally substituted with one or more substituents".'  The judge was even more critical of the application as filed, calling it "stupendously broad" and agreeing with its characterisation by Gilead as a "land grab".

Even excluding the compounds for which lack of activity had been admitted, the judge considered that it was not plausible that substantially all the compounds covered by claim 1 as proposed to be amended would be effective against Flaviviridae.  A key point in this reasoning is that the patent itself did not state that the compounds disclosed and claimed therein had activity, only that 'the nucleosides of the invention "may inhibit Flaviviridae polymerase activity" and "can be screened" for such activity using known assays'.

Therefore the patent, as granted or proposed to be amended, was held to lack inventive step.

For analogous reasons to the lack of inventive step, the patent was held to be invalid for insufficiency by excessive claim breadth.  This was pretty much to be expected, as the two grounds are closely connected.  More strikingly and unusually, the judge held that the specification did not enable the invention to be performed at all without undue burden, because it did not disclose how to make the compounds.  In the claimed structure there was an element that is rather difficult to make (Merpel explains for the chemists among our dear readers: quaternary substitution at the ribose 2' position, where the claimed structure required a fluoro and a methyl substituent) and which, as the evidence showed, Idenix's own scientists had struggled to make.  Experiments were adduced to show that a relatively accessible route to the compounds did achieve the required structure, albeit in low yield, but (as Merpel recalls seems always to be the way) they failed to achieve what they aimed to show.

As if the patent were not by now already dead enough, the judge turned to:

Added matter
The patent as granted was not held to involve added matter with respect to claim 1 - although the amendment as compared with the application as filed involved the selection of one subclass from an application of "stupendous breadth", it was  a class that was specified from the outset as being of particular interest.  Claim 4 as granted was however held to involve added matter, as it selected eight bases that were not disclosed as subclasses within the definition of purine or pyrimidine base in the Application.

More significantly, the proposed amendment to exclude the classes of compounds that Idenix's evidence showed would not plausibly have antiviral activity, while retaining those that their evidence showed would have such activity, was also held to involve added matter (notwithstanding that the judge had rejected plausibility for those classes as well.)  A bold suggestion by Idenix that it was not necessary for them amend the granted claims if they were partially invalid was also rejected.

So, the patent was ordered to be revoked.

An interesting point that did not however make much difference in the end was the construction of the term "phosphate" in the claims.  The judge construed this to include masked phosphates, such as were to be found in the Gilead drug candidate sofosbuvir (masked by a phenol group and a phosphoramidate group, Merpel informs chemists).  A superficially attractive argument by Gilead that the situation was all square with Actavis v Lilly - that the claims had been amended during prosecution and therefore the terms should be construed narrowly - was rejected.  The judge recorded:

counsel pointed out that I had held in Actavis v Lilly at [112] that, in principle, a limitation made to a claim to avoid an objection of lack of clarity could be relied on as aid to construction. I adhere to that view, but with the benefit of the arguments of the present case I would add that such an amendment is less likely to be a useful aid to construction than a limitation to avoid an objection of lack of support, which was the primary focus of my discussion in Actavis v Lilly.

The IPKat is sure that many practitioners will welcome this clarification.

The IPKat is equally sure that more will be found to be said about this Arnoldian judgment.  It is a fun read, and nicely indexed so that the reader can easily find their way back the bit that they are trying to find.


Chris said...

"What troubles this Kat is that Gilead were only able to prove this because it was their prior application - what would have happened if this had belonged to a completely independent third party? How would the validity of the priority right then have been established?

I would have thought the only fair way would be to check the same invention is disclosed in the priority document, and if so it's s2(3) prior art.

I mean, how do you even check if a citation's priority application was or was not the first application? We know from when Haberman sued the UKIPO that the UKIPO doesn't keep records for long.

For the similar situation of failing to provide translation of priority doc in time, the EPO treats the right of priority as remaining effective for determining state of art for 54(3) (F-VI 3.4)

It would be quite nice if something similar applied in the UK.

Anonymous said...

Chris - I think the point is that an application can only validly claim priority if the applicants have the appropriate right to it. So the same invention might be clearly disclosed in the priority document but the later application might nevertheless not be entitled to the invention and so not entitled to the date. Which will affect not only whether the applicants can get a patent, but also whether third parties can cite the application as (Section 2(3)) prior art atgainst a fourth party's application.

Bromonium said...

The situation that seemingly troubles the Kat, is one where a party's argument relies on the validity of the priority of a third party patent, where that right is dependent on whether or not that third party was entitled to claim that priority.

Could anyone comment on the burden of proof in such a case?

Should the party relying on the argument provide evidence that there is a valid chain of assignments, proving the entitlement to the priority claim?

Or, alternatively, would the claim assumed to be valid, because it was made and registered, unless evidence to the contrary is proven?

In other words, could a case for reversal of the burden of proof be made here?

Chris said...

@Anonymous of 23:16

I understand the principle but I think this is a situation where 3rd parties should have some legal certainty when assessing validity of a patent. Priority documents are readily available on file inspection, but many of the other requirements for a valid priority claim cannot be checked. I think that the EPO's approach is a better one this in case.

Anonymous said...

"I mean, how do you even check if a citation's priority application was or was not the first application?"

Exactly. But can you provide a solution to this problem? It will likely only ever come out through disclosure in a court action.

It's difficult enough for many applicants to know whether they have filed on something before.

Anonymous said...

Chris - apologies - when I read your first comment again in the cold light of day I realised I may have mis-interpreted it. I thought you were saying how the system worked at present when in fact you were proposing a change. Yes - it would be simpler if it were just a case of seeing what's in the priority document (and that a copy of the priority document has been filed). And I don't think it would be unfair to use this as the test for whether matter is in the 2(3) field, without worring about entitlement or whether it was the first application.

Incidentally, in the Haberman judgement the judge casts doubt on whether the rule about it being the first application is fair or useful, or even if it is actually required by the treaty that it is supposed to be implementing.

Anonymous said...

The treaty is as it is. The doubts of a judge are of no import.

Subscribe to the IPKat's posts by email here

Just pop your email address into the box and click 'Subscribe':