Scinopharm Taiwan Limited v Eli Lilly & Company

Scinopharm Taiwan Limited v Eli Lilly & Company [2009] EWHC 631 (Pat) is a decision of Kitchin J, judgment in which was given yesterday.  The case is a patent revocation one, the patent in question being an Eli Lilley patent for a process for making the compound gemcitabine, a chemotherapy drug used in the treatment of non-small cell cancers.

Gemcitabine is a nucleoside analogue.  Neucleosides can have two isomers, known as α and β anomer,  and in the case of gemcitabine it is the latter anomer that has the desired thereapeutic effect.  The patent claims a new way to make a neuclecide, with the advantage that it results in the creation of more of the valuable β anomer than the useless α anomer.

The importance of th patent was enhanced by the fact that the basic patent for the product  had expired and a SPC expired on 5 March this year: so Eli Lilley could not stop others making the drug, but they could stop them making it in the patented, efficient, manner - unless, of course, the patent was invalid for some reason, which is what Scinopharm tried to establish.

The attack was based on obviousness, and there was also a claim of insufficiency.  There is a useful review of the requirements for identifying the skilled addressee and understanding what would be common general knowledge, often difficult matters in patent cases.  The 41 pages of the judgment contain some complicated-looking chemistry, and the judge concluded that the invention was inventive over the prior art invoked by the applicants.  He also rejected the insufficiency claim.  There appears to be no new law in the jusgment, and perhaps its only purpose is going to be to add it to the scoresheet that I started a little while ago, reviewing how often the English courts would find a patent infringed and how often a claim for revocation would succeed, the purpose being to come to a very rough-and-ready view about how pro- or anti-patent the English courts are.  This one is as pro-patent as could be.