Ranbaxy vs. Warner-Lambert Company. EP 633: No implicit or explicit disclaimer

The Hague District Court, 13 September 2006, in the case of Ranbaxy Uk.Ltd / Ranbaxy Laboratories Ltd versus Warner-Lambert Company.

In the case on the merits Ranbaxy claims a court declaration that EP 633 is not infringed. In essence Ranbaxy argues that the patent only describes and protects the racemate of R,R and S,S and therefore does not protect the optically pure R,R or S,S. (…) So the court has to examine whether there is also a disclaimer in respect of the R,R- and S,S-enantiomers (the trans-enantiomers).

“3.27. (…) makes it highly unlikely that Warner-Lambert would have disclaimed the R,R-form. Might Warner-Lambert not already have had the knowledge at the time of the priority that the R,R-molecule would in fact be the only embodiment of the inventive thought having the intended therapeutic effect, the court supposes in any case that Warner-Lambert was familiar at that time with the fact that the R,R-forms of the substances developed by it would have the highest potential.

3.28. The (skilled) third party who studies the patent would also have the knowledge as summarized in 3.26. Already for this reason this average skilled person would not assume that there is a disclaimer for the R,R-form, nor read this in the patent, the description and the claims.

3.29. Finally in the view of the court one cannot read anywhere in the description, claims or prosecution history of EP 633 an implicit or explicit disclaimer.”

Read the entire judgment here.

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