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CC 586764/2023

Nov 10, 2023·EP3666797 · ANTIGEN BINDING PROTEINS TO PROPROTEIN CONVERTASE SUBTILISIN KEXIN TYPE 9 (PCSK9)

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Case details
Status
Case Closed (Patent revoked)
Action
Counterclaim for revocation
Category
Counterclaim for revocation
Parties
Claimants
Representatives
Respondents
Representatives
Division
Munich CD
Judges
Technology
  • Chemistry
    Biotechnology · Pharmaceuticals
Language
English
First decided
Jul 16, 2024
EPO Opposition
How this compares
The court's record for this kind of case, counted in first-instance rulings. A figure in brackets is the number of rulings a rate rests on.
Patent revokedMedian days to first decision
All UPC37% (34/91)124
Munich CDLockedLocked
Judge Ulrike VoßLockedLocked
Judge András KupeczLockedLocked
Judge Casper StruveLockedLocked

At the UPC: Regeneron Pharmaceuticals Inc. (9 cases)·Amgen Group (19 cases)

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Related cases
All proceedings on this patent

This dispute contains 3 other proceedings

UPC CFI 2221/2025·UPC CoA 529/2024·UPC CFI 14/2023

3 other defendants litigating the same or a related patent

UPC CFI 2220/2025·UPC CoA 528/2024·UPC CFI 1/2023

Start a free trial to see how each one ended.

More cases: Munich CD·2023

Decisions
  • 2024-07-16
    Counterclaim for revocationPublic

    Summary: The patent EP 3 666 797 B1 was revoked in its entirety for all Contracting Member States in which revocation was requested. The Main Request and all 17 Auxiliary Requests were found to lack inventive step. The defendant (patent proprietor Amgen) was ordered to bear the claimant's legal costs, agreed at EUR 1.375 million.

    Show the legal issues (5)
    • Claim interpretation
    • Priority (Article 87 EPC)
    • Inventive step (Article 56 EPC)
    • Arbitrary selection
    • Technical effect as indication of inventive step
Documents
Show all 373 documents
Document titleDatePublic
Procedural Order App_47154/20242024-10-23Not public
Final Order anonymised2024-07-16Not public
DecisionOutcome2024-07-16Not public
decision revocation counterclaim 14/20232024-07-16Public
decision revocation counterclaim 14/20232024-07-16Not public
Announcement2024-07-04Public
Recording of Oral Hearing - Placeholder2024-06-06Not public
Recording of Oral Hearing - Placeholder2024-06-06Not public
interimProcedureClosure2024-05-22Not public
Receipt2024-05-13Not public
Plain-English summary

Regeneron Pharmaceuticals brought a revocation counterclaim against Amgen's EP 3 666 797 B1 (anti-PCSK9 antibody patent) before the Central Division (Munich Section). The Central Division revoked the patent in its entirety over 17 contracting member states, finding that Amgen's Main Request and all 17 Auxiliary Requests lacked inventive step; Amgen was ordered to bear Regeneron's legal costs agreed at EUR 1.375 million, against a case value of EUR 100 million.

Accepted arguments
What the court agreed with — by party.

  • EP 3 666 797 B1 (anti-PCSK9 antibody) lacks inventive step over the prior art

    ClaimantLegal basis: Art. 56 EPC; Art. 138(1)(a) EPC; Art. 65(2) UPCA

    Note: Regeneron's inventive step attack succeeded against Amgen's Main Request and all 17 Auxiliary Requests; multiple realistic starting points were identified in the prior art.

Rejected arguments
What the court did not agree with — and why.

  • EP 3 666 797 B1 Main Request and all 17 Auxiliary Requests are valid and inventive

    RespondentLegal basis: Art. 56 EPC; Art. 76 UPCA

    Reason: All 17 auxiliary requests lacked inventive step for the same reasons as the Main Request; the Central Division applied Art. 76 UPCA (decisions on merits only on submitted grounds) and found no valid form of the patent.

Key legal principles
Doctrines and rules cited in the reasoning.
claim interpretation uses technical meaning for skilled person, not philological meaning; patent description may act as its own lexiconpriority right under Art. 87 EPC: subject-matter of claim must be derivable directly and unambiguously from the priority application by skilled person using common general knowledgeinventive step assessment starts from a realistic starting point in prior art; multiple realistic starting points are permissible and there is no requirement to identify the 'most promising' starting pointinventive step denied where skilled person would be motivated to arrive at the claimed solution and would implement it as a next step; absence of reasonable expectation of success does not follow merely from existence of alternative solutions in prior artfor denying inventive step it is sufficient that skilled person without inventive contribution would arrive at a result covered by the claimarbitrary selection from several equivalent possibilities does not contribute to inventive step

Browse other cases on this principle.

Prior art relied on
References cited and the role they played.
  • prior art starting points in the anti-PCSK9 antibody field (multiple realistic starting points identified by Central Division)Obviousness combination
Claim construction notes

EP 3 666 797 B1 claims antigen-binding proteins directed to PCSK9. The Central Division interpreted claim terms using their technical meaning for the skilled person in the antibody/cholesterol-lowering field, with the patent description serving as a lexicon for specialised terms. Priority validity was also assessed: the claimed subject-matter had to be derivable directly and unambiguously from the priority application using common general knowledge.