IP Newsletter Issue 19 (2015-07-14)
 
BJ Jialin Pharmaceutical Vs Pfizer for Atorvastatin

    In 2007, Pfizer US-PEE filed a lawsuit against Beijing Jialin Pharmaceutical Co., LTD. to Beijing No.1 Intermediate People’s Court for patent infringement. Jialin then requested for invalidity of a Chinese patent No.96195564.3 before the Patent Reexamination Board (PRB) of SIPO.  This patent involves a new crystallized form of marketed Atorvastatin for decreasing lipid in human body.
    PRB held that the crystallized hydrate products claimed in claim 1 to 3 were not fully disclosed.
    Pfizer then filed a lawsuit to the First Beijing Intermediate Court against PRB in first instance. The Court maintained PRB’s decision. Pfizer appealed to Beijing Higher Court. The Higher Court held that PRB did not define the technical issue to be solved of the invention, and did not confirm the chemical and physical parameters of the issues as a whole, which was not appropriate. So the Higher Court withdrew the judgment of the Intermediate Court.
    Both PRB and BJ Jialin Pharmaceutical did not accept the decision in the second instance and applied for a retrial of the case to the Supreme Court. The Supreme Court held that the water content is a key characteristic of the invention, and was essentially and closely related to the technical issues of the invention; the Patent specification was not clear enough according to the Patent Law Article 22, paragraph 3. Accordingly, the Supreme Court maintained the decision by the First Beijing Intermediate Court.
    Therefore, Pfizer lost this case finally.  No Chinese patent of crystallized Atorvastatin hydrate exits by Pfizer.