Omnipharm Limited v Merial, Court of Appeal (Civil Division), London, UK, 23 January 2013, Case No  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.