William Fry has successfully defended leading pharmaceutical company, Boehringer Ingelheim, before the Irish Commercial Court in a long running patent revocation action, which forms part of a multi-jurisdictional patent dispute, brought by Norton (Waterford) Ltd trading as Teva Pharmaceuticals Ireland (“Teva”).
The patent at issue in the proceedings protects Boehringer Ingelheim’s SPIRIVA® HANDIHALER®, a globally successful product for the treatment of patients with chronic obstructive pulmonary disease.
Grounds of Challenge
In October 2014, Teva initiated proceedings seeking the revocation of the Irish designation of European Patent No. (IE) 1379220 entitled “Inhalation Capsules” (the “220 Patent”).
Teva’s challenge comprised a three-fold attack on the validity of certain proposed amended claims of the 220 Patent on the following grounds:
- obviousness (i.e. that invention was obvious over certain prior art and was thus lacking an inventive step);
- an ‘AgrEvo’ challenge (i.e. that the elements of the invention distinguishing it from what went before it make no technical contribution to the subject matter); and
- insufficiency (i.e. that the 220 Patent did not disclose the invention clearly or completely enough for a person skilled in the art to perform it).
Decision
On 26 July 2017, Mr Justice Barrett ruled in Boehringer Ingelheim’s favour by upholding the validity of the relevant amended claims of the 220 Patent and rejecting all of Teva’s grounds of challenge (the judgment can be found here). The matter is back before the Court in October 2017.
Contributed by: Charleen O’Keeffe, Laura Scott
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