Generics [UK] Ltd & ors v H. Lundbeck A/S [2009] UKHL 12

In January 2009 Michael Tappin and Mark Chacksfield appeared as junior counsel for the appellant, Lundbeck, in the appeal to the House of Lords. The primary issue before the House of Lords was whether the ratio given by Lord Hoffmann in Biogen Inc v Medeva Plc (1997) RPC 1 HL meant that a product claim should be held to be insufficient if the product was an obvious desideratum and the only inventive step in the patent was one method of making the product. The House concluded that Biogen insufficiency was limited to the very specific facts of that case, namely where the invention was defined partly by what the product did and partly how the product was made. The claims in Biogen were to a class of products and as such the patent was insufficient because it did not teach the skilled person how to make all the products in the class. The reasoning in Biogen was not relevant to ‘normal product claims’, because for product claims, a patent is sufficient if it teaches the skilled person one way of making the product. The patent in suit disclosed a way of making the enantiomer and so was held to be valid.