EPLAW Patent Blog

UK - Omnipharm Limited v Merial

Omnipharm Limited v Merial, Court of Appeal (Civil Division), London, UK, 23 January 2013, Case No [2013] EWCA Civ 2

This was an appeal against the judgment of Floyd J, dated 21 December 2011, following a trial of an action brought by Omnipharm to revoke two of Merial’s patents, EP (UK) 0 881 881 (the ‘881 patent) and EP (UK) 2 317 564 (the ‘564 patent) on the grounds of obviousness and insufficiency.
The patents in suit both relate to ‘spot on’ formulations of parasiticide for protecting small animals against ticks and fleas; the ‘881 patent relating to formulations of fipronil and the ‘564 patent relating to fipronil in combination with an insect growth regulator (“IGR”).  The patents protect Merial’s “Frontline” products which provide Merial with global sales of approximately $1 billion per year.  

After allowing Merial’s proposed amendments, the trial judge declared the ‘881 patent valid, but found the ‘564 patent invalid for insufficiency.  He also ordered Merial pay 40% of Omnipharm’s costs.  Merial appealed.  By way of contingent cross-appeal, Omnipharm contended that if the ‘564 patent was found to be sufficient, the judge would or ought to have found it invalid for obviousness and by parity of reasoning, should also have found the ‘881 patent invalid for obviousness. 
The Court of Appeal upheld the trial judge’s decision on insufficiency. As a result the cross-appeal was not pursued.

FR – Omnipharm v. Merial

“Clear the way”: only a genuine competitor has standing to bring an action for patent revocation: Comments of Isabelle Romet and Dora Talvard (Véron & Associés) on judgment of the Court of Appeal of Paris, 17 February 2012 (Omnipharm v. Merial).

A claimant which fails to demonstrate its ability and intention to manufacture and market a competing product has no standing to bring an action for the revocation of a patent. The French judgment contrasts with the English one handed down by the Patents Court, Omnipharm Ltd v Merial [2011] EWHC 3393 (Pat) (21 December 2011) ([2011] EWHC 3393 (Pat)), which, in parallel proceedings, entitled the same claimant to the revocation action and incidentally decided that it had standing to bring an action for a declaration of non-infringement.

UK - Intervet UK Limited v Merial & Others

Intervet UK Limited v Merial & Others, High Court of Justice, Chancery Division, Patents Court, London, UK, 23 February 2010, Case No. [2010] EWHC 294 (Pat), with thanks to Richard Willoughby, Howrey

Today, the approved judgment of Mr Justice Arnold has been published regarding the UK aspect of a number of associated actions concerning the Defendant's European patent entitled "Method for the in vitro diagnosis of type II porcine circovirus infection and diagnostic reagents" (the "Patent").  In summary, the Defendants alleged that Intervet had infringed claim 18 of the Patent by making a vaccine know as Porcilis PCV.  Intervet denied infringement, and sought revocation of the Patent.  Mr Justice Arnold has held that the Patent is invalid and must be revoked for reasons of obviousness, and made reference to the Dutch court's conclusions on this point in his judgment.  Mr Justice Arnold further held that, in any event, Intervet had not infringed claim 18.

Read the judgment (in English) here.

Read the post re the parallel Dutch case here.

NL - Intervet v. Merial

Intervet v. Merial, accelerated invalidity proceedings, The Hague District Court, The Netherlands, 9 December 2009, Docket No. 341571 / HA ZA 09-2183, with thanks to Willem Hoyng, Howrey

The District Court of The Hague invalidates the Dutch part of three European Patents of Merial concerning the Post-Weaning Multisystemic Wasting Syndrome (PMWS) (a disease common in pigs) and vaccine technology.

Merial is liable for the damages caused by the descriptive seizures conducted at the Intervet premises (Art. 7 Enforcement Directive). The calculation of these damages will take place in separate follow-up proceedings  for the determination of damages.

An appeal has been filed.

Read the judgment (in Dutch) here. 

Read the judgment (in English) here.