Resolution not barred from seeking to revoke escitalopram SPC

In Resolution Chemicals Ltd v H. Lundbeck A/S [2013] EWHC 739 (Pat), a trial of preliminary issues ahead of a full trial scheduled for November 2013, Mr Justice Arnold (Patents Court, England and Wales) was asked to rule in an action in which Resolution sought revocation of Lundbeck's SPC/GB02/049 for escitalopram, alleging invalidity of the basic patent (European Patent (UK) No. 0 347 066).

As the judge explained by way of background, Escitalopram is the S or (+) enantiomer of citalopram. Citalopram is an anti-depressant drug of the selective serotonin re-uptake inhibitor (SSRI) type which was first synthesised by Lundbeck in 1972 and launched in 1989. Some time after it developed citalopram, Lundbeck devised the method for synthesising escitalopram described and claimed in the Patent and discovered that escitalopram was the active enantiomer of the racemate. This led to it launching escitalopram in 2002. Escitalopram has been hugely successful. Lundbeck was also the proprietor of a number of patents for citalopram and methods of making it which have since expired.

On 3 January 2013, in response to Resolution's application for revocation, Lundbeck issued an application seeking:

i) summary judgment on the ground that Resolution was precluded from bringing its claim and/or relying on allegations in its claim by reason of cause of action estoppel or issue estoppel or abuse of process;

ii) alternatively, summary judgment on the ground that Resolution's claim had no real prospect of success; and

iii) in the further alternative, a conditional order that Resolution provide security for Lundbeck's costs of these proceedings.

In short, after three days of hearings and a judgment of 164 paragraphs, laid out with that judge's usual clarity and attention to detail, Arnold J ruled as follows:

i) Resolution was not precluded from challenging the validity of the Patent, and hence the SPC, on the ground that it was a privy of either Arrow Generics or Teva UK/Teva PI and therefore bound by the decisions adverse to those parties in the earlier escitalopram litigation.

ii) Resolution had a real prospect of successfully contending that all the claims of the Patent were obvious over 884 and that claims 1-5 were obvious over Bigler. Accordingly, Lundbeck's application for summary judgment was dismissed and Resolution's application for permission to amend its Grounds of Invalidity was allowed.

iii) Resolution would not be ordered to provide security for Lundbeck's costs.

The judgment is a long one which raises numerous issues. This blogpost seeks to alert readers to the existence and substance of the ruling, but does not attempt at this very early stage to analyse and evaluate it.