EPLAW Patent Blog

DE - Durchfuhr von DVD-Playern (transit of DVD-players)

DE - Durchfuhr von DVD-Playern (transit of DVD-players), infringement proceedings, Court of Appeals Hamburg, Germany, 29 December 2009, Docket No. 3 U 242/05

Transit of goods through Germany is not an act of patent infringement. 

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

US - CAFC: False marking statute applies on a per article basis

Forest Group, Inc. v. Bon Tool Co., United States Court of Appeals for the Federal Circuit, 28 December 2009, Case No. 2009-1044, with thanks to Willem Hoyng, Howrey

The CAFC held yesterday that the false marking statute (35 U.S.C. § 292) applies on a per article basis rather than a per offense basis. While statute allows for up to $ 500 for each offense, the court did note that the full $ 500 for each article might not be appropriate in cases involving mass-produced articles.

Section 292 provides a civil penalty for false marking of goods. It states in relevant part:

"Whoever marks upon, or affixes to, or uses in advertising in connection with any unpatented article, the word “patent” or any word or number importing that the same is patented, for the purpose of deceiving the public . . . Shall be fined not more than $ 500 for every such offense."

Read the CAFC opinion here.

NL - Medinol Limited v. Abbott B.V.

Medinol Limited v. Abbott B.V., Abbott Vascular Devices Holland B.V. and Abbott Logistics B.V., infringement proceedings, District Court The Hague, 23 December 2009, Docket No. 329760 / HA ZA 09-418, with thanks to Simon Dack, De Brauw Blackstone Westbroek

Medinol is the holder of European Patent EP 1181902  for 'A flexible expandable stent', which was upheld by the Opposition Division after Medinol filed an auxiliary request. Abbott is the manufacturer of 'Vision' and 'Xience' stents, which are offered and sold by Abbott in many countries, amongst which The Netherlands. Medinol commenced accelerated patent infringement proceedings before the District Court in The Hague.

The District Court finds that Abott does not infringe Medinol's patent. For instance, claim 1 of the patent requires two meander patterns of which the second meander pattern extends in a direction different from the direction of the first meander pattern. According to the District Court the second meander pattern of Abbott’s stents is substantially part of the first meander pattern and thus extends in the same direction. The court also points out other differences between Abbotts’ stents and the requirements of claim 1 and therefore comes to the conclusion that Abbott does not infringe Medinol’s patent literary.

Medinol argues that by applying the doctrine of equivalency Abbott does infringe upon claim 1 of its patent. However, this is disregarded by the District Court as it is insufficiently substantiated.

Read the judgment (in Dutch) here.

US - Microsoft to pay $290m damages for patent infingement

Times Online reports: Microsoft to pay $290m damages for patent infingement

"Microsoft has been barred from selling its flagship word processor Word and must pay $290 million in damages for infringing a patent held by a small Canadian software company, i4i. The ruling, by the United States Court of Appeals for the Federal Circuit prevents Microsoft from selling any versions of Word 2003 or Word 2007 after January 11 2010."

The CAFC affirmed an injunction issued earlier by the United States District Court for the Eastern District of Texas.

Read more in the Times Online here.
Read more in the New York Times here.

Read the US CAFC opinion here.

Young EPLAW - Mark your Calendar

Young EPLAW - Mark your Calendar

The third annual Young EPLAW meeting will be held on Monday 17 May 2010 in Brussels.

The Young EPLAW meeting is a meeting organized especially for young patent enthusiasts (up to 36 years) who work in the office of an EPLAW member. 

Further information will follow shortly. The programme of the past two Young EPLAW meetings can be found on the EPLAW home page.

SE - Seeking Preliminary Injunction for Pharmaceutical Patent Infringement in Sweden

Seeking Preliminary Injunction for Pharmaceutical Patent Infringement in Sweden - A Comparative Law Analysis of Pharmaceutical Patent Protection and Injunction Proceedings in the Nordic Countries

By Erik Ficks, Roschier

"2009 has brought about significant changes to the Swedish pharmaceutical market as a consequence of the dismantling of the state pharmacy monopoly. As of 1 July 2009, parties other than the Swedish state are permitted to establish pharmacies. This increased activity creates an increased need for patent holders to safeguard their rights, primarily by preliminary injunctions. Coincidentally, due to the delayed implementation of the Enforcement Directive (also known as IPRED), it became possible for Swedish courts to issue preliminary injunctions against imminent threats of patent infringement as of 1 April 2009.

"In order to present how the Swedish courts may apply this new provision a comparison is made with cases where such preliminary injunctions have been granted in Denmark, Norway and Finland."

Read the complete contribution here.

NL - Mark your Calendar

The annual Dutch AIPPI meeting in Zeist will be held on 10 March 2010. More information will follow shortly.

NL - e-Traction Europe B.V. v. N.V. Nederlandsch Octrooibureau

e-Traction Europe B.V. v. N.V. Nederlandsch Octrooibureau, preliminary injunction proceedings, District Court The Hague, 22 December 2009, Docket No. 351276 / KG ZA 09-1500

Dispute in the aftermath of a failed cooperation, based on an Asset Purchase Agreement ('APA'). Patent attorney N.V. Nederlandsch Octrooibureau ('NOB') changed the name in which two European patent applications were registered, from e-Traction to Freerider, as instructed by Freerider. e-Traction files for a preliminary injunction to prevent NOB from making further changes to the names in which the patents are registered.

The judge takes the (disputed) validity of the APA as a starting point and states that it is in practice prima facie presumed that the one mentioned as 'applicant' on a patent application also is entitled to the patent application. Since the APA leaves the 'ownership' with respect to the patents at e-Traction, Freerider was not authorized to change the name in which the applications were registered, even though such name change does not imply transfer of ownership. In view of the APA Freerider did not have the authority to change the name of the 'applicant'.

NOB should have investigated further, before changing the name and failed to exercise due care. The preliminary injunction against NOB was granted.

Read the judgment (in Dutch) here.

ECJ to Decide on Manufacturing Fiction

ECJ to Decide on 'Manufacturing Fiction' under Counterfeit Goods Regulation

By Geert Theuws, Howrey LLP

"Following questions posed by the Belgian and to be posed by the UK court, the ECJ will be deciding on an issue which is of significant importance for the future of the European border seizures practice. It concerns the legitimacy of the application of the so-called manufacturing fiction, when ascertaining whether goods seized by customs agencies pursuant to the Counterfeit Goods Regulation infringe upon an IP right."

Read the complete contribution here.

Read the judgment Philips v. Furness (The Hague District Court) (in English) here.

Read the judgment Philips v. Postech (Dutch Supreme Court) (in English) here.

Read the judgment Sosecal v. Sisvel (The Hague District Court) (in English) here.
Read the judgment Philips v. Lucheng c.s. (Antwerp District Court) (in Dutch) here.

UK - Dr Reddy’s Laboratories v. Eli Lilly and Company Limited / Olanzapine

Dr Reddy’s Laboratories (UK) Limited v. Eli Lilly and Company Limited, Court of Appeal (Civil Division), UK, 18 December 2009, Docket No: Case No.A3/2008/2966, with thanks to Robert Fitt, Bristows

The Court of Appeal upheld the decision of Mr Justice Floyd and confirmed that Lilly’s (selection) patent concerning the drug olanzapine is valid.

Olanzapine is one of the 10¹⁹ compounds and one of the 86,000 preferred compounds mentioned in the '235 patent. It is not mentioned specifically. Dr Reddy's Research Laboratories (DRL) contention that the specific compound lacks novelty, was rejected (i) as a matter of a priori reasoning (a generalised prior description does not disclose a specific matter within it) and (ii) because it is inconsistent with EPO Board of Appeal Case Law (Hoechst Enantiomers T 0296/87).

The pre-EPC rules, as formulated in I.G. Farbenindustrie's Patents should be regarded as part of legal history, not as part of the living law. The better approach is to see what the EPO Boards do (AgrEvo (T 0939/92) and Wyeth (T133/01). "The EPO jurisprudence is founded firmly around a fundamental question: has the patentee made a novel, non-obvious technical advance and provided sufficient justification for it to be credible?" An 'arbitrary selection' provides no technical contribution.