“3.
It’d be interesting to ask why Novartis did not patent “Imatinib
Mesylate” or claim this separately–did they know it was “obvious” from
the 1993 application.”

I think your suspicion may be correct.

“4. Evidence was offered by Ranbaxy and others that the Beta Crystalline
(BC) form of IM inhers in IM and comes up anytime you produce IM.  Novartis strongly objected stating that the
initial sample used to test this was contaminated with the BC form–and
hence you had BC. “

That’s the funny thing about experiments in patent cases – they can cause lengthy delays and diversions.  So, they can be deployed strategically, depending on what you’re trying to do.

I once was involved in a patent infringement case that went for 10 years – even at the end (when it was settled) the parties were still arguing over the experiments.

On the one hand, one could wonder whether it would have been better for Ranbaxy and the others to keep their powder dry on this point.  The documentary disclosure seems pretty compelling alone.

However, I’m not sure what Novartis could achieve by a length delay – except time to fully test a WTO dispute…

Your post has generated some very interesting discussion. Just a couple of quick points:

1. I think you’re absolutely right in pointing us to the US/EU applications and finding out how Novartis managed to cross the non obviousness bar there. I havent personally seen any of these documents-but would love to. So if you receive any feedback on this, please let me know.

2. Ranbaxy and Hetero are involved in the appeal. In fact, Ranbaxy’s lawyer, Mr Lakshmikumaran has been the best of all the counsels who performed at the Madras High Court recently.

3. It’d be interesting to ask why Novartis did not patent “Imatinib Mesylate” or claim this separately–did they know it was “obvious” from the 1993 application.

4. Evidence was offered by Ranbaxy and others that the Beta Crystalline (BC) form of IM inhers in IM and comes up anytime you produce IM. Novartis strongly objected stating that the initial sample used to test this was contaminated with the BC form–and hence you had BC. I’m not sure who is right–and look forward to a ruling from the IPAB on this.