Teva Sante, Teva Pharmaceutical Industries Ltd v. Merck Sharp & Dohme Corp, Tribunal de Grande Instance de Paris 3rd Chamber 1st Section, 9 November 2010, with thanks to Pierre Véron, Véron & Associés for sending in the judgment, translation and summary
"This is another judgment about Merck’s patent EP 0 724 444 for the use of finasteride for the treatment of androgenic alopecia which has already been scrutinized in the UK and in Germany:
- the UK Court of Appeal (Civil Division) London, UK, 21 May 2008, Case No.  EWCA Civ 444, Actavis v. Merck / Dosage Regime which held that a dosage regime was patentable and that, in the particular circumstance, it was novel and non-obvious;
- the German Bundespatentgericht on 26 June 2008, Ni 58/06 (EU), which decided that a dosage regime was patentable (but that it was lacking novelty in the specific situation).
In France this patent has already been held invalid by a former judgment of the Tribunal de Grande Instance de Paris upon Actavis’ request on 28 September 2010 (see the earlier post here) where the court held that: “A specific dosage for the treatment of an illness constitutes neither a first nor a second therapeutic application but simply an indication of the range within which this substance is efficacious so as to treat such or such an illness in light of the tests and research completed and explained in the patent.”
It is again held invalid, for the same reason, this time upon Teva’s request.
Murder me twice is normally impossible (except for Alfred Hitcock).
This is also true for a patent, because (according to French law) a judgment revoking a patent has immediately effect erga omnes: the day the judgment is handed down, the patent is invalid and a further claim for invalidity is normally not acceptable.
However, in the present case, the oral arguments in the Teva case took place on 27 September 2010 while the judgment in the Actavis case was handed down by the Tribunal on 28 September 2010, the day after (the parties knew that the judgment would be given the day after, but the patentee did not request an adjournment of the Teva case, probably because he was confident that the patent would be held valid in the Actavis case)
According to French rules of proceedings, the court must make its decision on the basis of the situation existing when the oral arguments are exchanged; a new situation arising after this exchange cannot be taken in consideration, except if the court decides to reopen the discussion.
Despite a request from the patentee, the Tribunal did not decide to do so in this case, so that the patent has been murdered twice."
Read the judgment (in French) here.
Read the judgment (in English) here.