The Supreme Court has handed down its long-awaited judgment in the Warner-Lambert v Generics & Actavis case.
In short, Warner-Lambert lost.
The case concerned Warner-Lambert's patent, which claimed in 'Swiss form' the use of a molecule called 'pregabalin' for the treatment of pain, in particular 'neuropathic pain'. The majority in the Supreme Court confirmed the conclusions of the Court of Appeal and the Patents Court that key claims of Warner-Lambert's patent were invalid for insufficiency and could not be amended.
Further, the majority concluded that if the key claims had been valid, they would not have been infringed by the marketing of pregabalin medicines with a 'skinny label' not presenting the medicine as suitable for the claimed uses.
However, there was clear divergence in the reasoning of the Law Lords. The judgment of the Supreme Court is made up of four different judgments, from Lord Sumption (with whom Lord Reed agreed), Lord Hodge, Lord Briggs and Lord Mance. As such, it can be expected to lead to considerable argument in future cases as to the correct application of the law.
For practitioners, the divergence in the Court's reasoning perhaps reflects the lack of an intellectual property specialist in the Supreme Court at the time the case was heard (February 2018). In October 2018, Lord Kitchin was sworn in as a Justice of the Supreme Court - he may well be asked to consider these areas of the law afresh in another case.
The next patent case likely to be considered by the Supreme Court is that of Actavis v ICOS [2017] EWCA Civ 1671, a case about a unit dosage form of tadalfil (used for the treatment of erectile dysfunction), which may present the Court with an opportunity to revisit aspects of the law regarding construction and infringement, as well as considering fundamental questions on the availability of patent protection for inventions residing in a dosing regimen.
Stay posted for our in-depth analysis of the Supreme Court's judgment in the Warner-Lambert case. A copy of the Supreme Court's judgment in Warner-Lambert v Generics & Anr [2018] UKSC 56 is available here.