EPLAW Patent Blog

DK - Novartis v. Teva Denmark (Valsartan)

Novartis AG and Novartis Healthcare A/S v. Teva Denmark A/S (Valsartan), Maritime and Commercial Court, Denmark, 29 September 2009, Docket No. T-32-08

Teva Denmark applied for a marketing authorization for a generic product which would (admittedly)  infringe upon the Novartis process patent if marketed. Novartis filed an application for an injunction prohibiting Teva from obtaining the authorization. Teva argued that the only purpose of the Danish application was to use Denmark as a reference country under the decentralized procedure. The main issue in the present case was whether applying for a marketing authorization was sufficient evidence that Teva would undertake the actions that Novartis  sought prohibited cf. § 642, no. 2 in the Danish Administration of Justice Act. The enforcement court refused to grant an injunction as it found that applying for an authorization in itself did not constitute sufficient evidence that Teva would take steps to infringe the Novartis patent rights. The decision was appealed, and on appeal the application was granted.

In the confirmatory action before the Maritime and Commercial Court, the court stated that it should be possible for competitors to prepare marketing of their products before the patent expires and due to slow processing times for granting marketing authorization it was necessary that Teva filed an application at an early state. This, in combination with the fact that Teva had declared it would respect Novartis’ patent, meant that there was no evidence that Teva would infringe Novartis' patent rights. On these grounds, The Maritime and Commercial Court declined to grant an injunction, therefore adopting the decision of the enforcement court.

 

DE - MP3 Player Import / infringement

MP3 Player Import, infringement proceedings (liability of a shipping company), Federal Supreme Court, Germany, 17 September 2009, Docket No. Xa. ZR 2/08

A shipping company shipping patent infringing articles can be held responsible for patent infringement, if it does not clarify with reasonable effort whether the shipped articles are actually infringing or not immediately after notification by customs authorities that the shipped articles might be patent infringing. However, there is no general obligation for shipping companies to examine shipped articles as to a violation of intellectual property rights before they are accepted for shipment.

Read the judgment (in German) here.

Read a summary in English (provided by Bardehle Pagenberg) here.

DE - Lundbeck v. Neolab Ltd. (Escitalopram) / invalidity

Lundbeck A/S v. Neolab Ltd. et al. (Escitalopram), invalidity proceedings, Federal Supreme Court, Germany, 10 September 2009, Docket number Xa ZR 130/07

Patentability of an enantiomer over a known racemate.

The Federal Supreme Court states that a publication from which it is apparent that there must be enantiomers of a chemical compound does not directly and clearly reveal the enantiomers themselves, unless the publication makes it easily possible for the person skilled in the art to obtain these enantiomers.

A marketing authorisation for a medicinal product that contains a chemical compound in racemate form as the active ingredient does not preclude the issuance of a supplementary protection certificate for a medicinal product which contains an enantiomer of the same compound.

Read the judgment (in German) here.
Read the judgment (in English) here.
Read a summary (in English), provided by Bardehle Pagenberg here.

Head note: Tilman Müller-Stoy

DE - Füllstoff / infringement

Füllstoff (Filler), infringement proceedings (prior use right), Federal Supreme Court, Germany, 10 September 2009, Docket No. Xa. ZR 18/08

An alleged patent infringer is not entitled to a prior use right by virtue of law, if there is a contractual agreement in place between the alleged patent infringer and the inventor and if the alleged patent infringer obtained knowledge of the invention due to the execution of the contractual agreement. In such case, it is exclusively a matter of the scope of the contractual agreement, whether the alleged patent infringer is entitled to any rights with respect to the invention.

Read the judgment (in German) here.

DE - Polyolefinfolie / opposition

Polyolefinfolie (Polyolefin foil), opposition proceedings (violation of due process), Federal Supreme Court, Germany, 8 September 2009, Docket No. X. ZB 35/08

It must be considered as a violation of due process in opposition proceedings, if a patent is revoked based on a document which was introduced by the opponent only incidentally when setting forth an additional ground of opposition and if the court did not point to the relevance of this document before making its decision, in order to give the patent owner the opportunity to defend his patent.

Read the judgment (in German) here.

DE - Verfahren zur Lagerung von Stückgut / infringement

Verfahren zur Lagerung von Stückgut (Method for storing), infringement proceedings (introducing another patent in suit on appeal), Court of Appeals Düsseldorf, Germany, 3 September 2009, Docket No. 2 U 48/07

It is generally admissible to assert another patent in suit which was granted during the pending infringement appeal procedure for the first time in the pending infringement appeal procedure.

Read the judgment (in German) here.

EU - AHP Manufacturing BV ./. Bureau voor de Industriele Eigendom

EU - AHP Manufacturing BV ./. Bureau voor de Industriele Eigendom, Court of Justice, preliminary ruling, SPC, 3 September 2009, Docket No. C-482/07

The Council Regulation (EEC) No. 1768/92 does not preclude the grant of a SPC certificate to the holder of a basic patent if one or more certificates have already been granted for the same product.

Read the decision (in English) here.

Read a summary in English (provided by Bardehle Pagenberg) here.