Charlotte May KC (together with Joe Delaney) successfully represented the Claimant and Third Party (together, “Teva”) in a revocation action of a patent of the Defendant “Grunenthal”. The patent in issue related to a formulation of testosterone undecanoate with castor oil and benzyl benzoate for the treatment of low testosterone levels in men, a condition called hypogonadism (the “Patent”).
Teva had argued that the Patent was invalid on the grounds of obviousness over an article (“von Eckardstein”) read in conjunction with two other articles cited in von Eckardstein, and insufficiency.
Meade J held that the Patent was not obvious, but was insufficient for lack of plausibility. Referring to the recent decision in Sandoz v Bristol-Myers Squibb [2023] EWCA Civ 472 and Arnold LJ’s dicta that the Enlarged Board of Appeal’s decision in G2/21 provided no reason for the UK courts to depart from the ab initio plausibility test of the UK Supreme Court in Warner-Lambert, Meade J held that it was not possible to predict that formulations across the scope of the claims will work.