EPLAW Patent Blog

DE - E-Mail via SMS

E-Mail via SMS, German Federal Supreme Court, 22 November 2011, Case No. X ZR 58/10

In the above judgment, the German Federal Supreme Court ruled on obviousness of improvements of data structures provided in an international standard, finding that a skilled person concerned with selectively improving a data structure provided in an international standard normally feels compelled to make recourse to mechanisms already envisaged by the standard for solving the technical problem. If an assessable number of possible problem-solving approaches arise from the standard, each of which has specific benefits and drawbacks, as a rule good cause is given to take each of these approaches into consideration.

Issues of "technical character" and/or "statutory exclusion" were neither raised by the parties nor by the Federal Supreme Court.

Read the decision (in German) here.
Read the summary in English (provided by Bardehle Pagenberg) here.

Head note: Stefan Steinbrener

UK - Nokia v IPCom

Nokia GmbH v IPCom GmbH & Co. KG, High Court, 20 February 2012, Case No. HC09C04868, Neutral Citation Number: [2012] EWHC 225 (Pat)

In the latest of a long line of patent cases between IPCom and Nokia, Mr Justice Floyd held that IPCom’s proposed amendments to its patent be allowed in order to preserve validity but that none of the claims of the amended patent was in any event essential to the UMTS, GSM or LTD mobile telecommunications standards. The case was relatively unusual in that neither infringement nor validity of the patent as granted were directly in issue. Rather IPCom sought to maintain validity based on three alternative sets of amendments, whilst Nokia sought a declaration that the patent as granted or as proposed to be amended was not essential to various standards, implying that it was possible to sell a device which conformed to that standard without infringing the patent.

NL - SCA Hygiene Products v. M.T.S. Euro Products

SCA Hygiene Products AB v. M.T.S. Euro Products B.V., District Court The Hague, Preliminary Injunction Proceedings, The Netherlands, 20 February 2012, Case no.409578 / KG ZA 11-1496

SCA Hygiene Products is the owner of a European patent for an “end plug for a roll of material…”, and requested a preliminary injunction against M.T.S. Euro Products B.V. However, according to the President of the Court of The Hague, there would be no valid claim to priority. The President held that the priority document disclosed a feature which would be understood by the skilled man to be an essential feature of the invention, whilst this feature was not included in the claims of the application as filed.

In reference to G2/98, the President concluded that the claims of the application as filed were thus not directed to the (same) invention which was disclosed in the priority document. By way of analogy, the President moreover applied the 123(2) test to the application as filed vis-à-vis the priority document, and held that under this test the claims of the application as filed would contain added matter. Also for that reason, the priority claim was preliminarily held to be invalid.  As there was an uncontested public prior use in the priority year, the President concluded that there would a serious not to be neglected chance that the invoked patent would be invalidated in proceedings on the merits, and refused to grant the preliminary injunction.

Read the judgment (in Dutch) here.

Head note: Geert Theuws

SE - Hospira v. Aventis

Hospira UK Limited and Hospira Enterprises B.V. v. Aventis Pharma S.A., District Court of Stockholm, 7 October 2011, Docket No. T 19169-10

The Hospira companies held the marketing authorization for and imported the pharmaceutical Docetaxel Hospira for Sweden. Aventis Pharam S.A. held three EP patents for Sweden and had in other jurisdictions claimed that Docetaxel Hospira infringed the EP patents (and in some jurisdictions requested and been granted ex parte preliminary injunctions). In preparation for the launch of the pharmaceutical in Sweden, the Hospira companies requested that the District Court of Stockholm should invalidate the patents for Sweden. Aventis first denied the request, referring inter alia to on-going settlement negotiations, but eventually admitted that the patents be invalidated. The only contentious issue for the Court to decide was therefore whether the Hospira companies should be reimbursed for its legal costs.

In its reasoning, the Court stated that a patent can only be invalidated by a court decision and that someone requesting an invalidity order therefore was forced to commence court proceedings irrespective of the patent holder's position. Thus it could not be considered an "unnecessary trial" for which a winning party may not be reimbursed for its legal costs under the Swedish Code of Judicial Procedure, irrespective of the fact that the writ of summons had been submitted without prior correspondence with the patent holder. Aventis was therefore order to reimburse the Hospira companies' "reasonable" costs, which was less than half of the total costs claim. The Court did not take any particular notice of Aventis' argument that it could have agreed to voluntarily cancel the patent which can be done by application to the Swedish Patent and Registration Office). 

Read the judgment (in Swedish) here.

Head note: Erik Ficks

SE - Time Bar for Damage Claims Clarified

The Swedish Supreme Court Clarifies the Law on Time Bar for Damages Claims, by Erik Ficks, Roschier

The case
The Swedish Supreme Court recently had the opportunity to provide guidance on the issue of time bar for damages claims in patent infringement cases (NJA 2011 s. 270). The case concerns a long-standing patent dispute between Lely Industries N.V. and Lely Sverige Aktiebolag, on the one side, and DeLaval International AB, on the other side. In this particular case, the Svea Court of Appeal had ruled that Lely had infringed DeLaval's patent for software included in milking robots. The Court of Appeal ordered Lely to pay DeLaval damages of in total 1.7 million SEK (roughly 170,000 EUR) based on compensation for loss of sales of four robots and for the use of three robots.

Read the entire contribution (in English) here.

Read the Supreme Court decision (in Swedish) here.
Read the District Court decision (in Swedish) here.  

SE - Occlutech v. AGA

Occlutech GmbH v. AGA Medical Corporation, AGA Medical Corporation v. Occlutech International AB and Tor Peters (private person), District Court of Stockholm, 4 March 2011, Docket No. T 18865-07 and T 4110-08 (joint cases)

Occlutech GmbH requested that the District Court should declare that it is free to sell its product in Sweden, irrespective of AGA Medical Corporation's EP patent for Sweden. The request was denied by AGA and, in response, AGA claimed that Occlutech's Swedish subsidiary (Occlutech International AB) and its chairman (Tor Peter) was guilty of infringement of AGA's patent (requesting an injunction and that examples of the product should be destroyed). The patent infringement case was denied.

In the District Court's assessment, AGA's alleged interpretation of the patent was more extensive than for which support could be found in the patent claims, in the patent description or from the patent application process. Due to the differences of the products, the District Court concluded that Occlutech's protect was outside the patent protection and also, consequently, that it did not infringe the patent. For the assessment of the alleged patent infringement, the Court also considered the doctrine of equivalents. However, neither on the basis of such assessment was the patent considered infringed.

Read the judgment (in Swedish) here.

Head note: Erik Ficks

UK - Queensland v Comptroller General of Patents / SPC

University of Queensland & CSL Limited v Comptroller General of Patents, High Court, 14 February 2012, Case Number: CH/2010/APP/0620, Neutral Citation Number: [2012] EWHC 223 (Pat)

The decision of the CJEU in Medeva (noted here) has been widely commented upon and has now been applied by the High Court.  In a related reference the CJEU dealt with further questions concerning Queensland by reasoned Order (noted here)  On 14 February 2012 the High Court handed down its judgment on the affect of Medeva and the reasoned Order on the Queensland SPC applications.

Queensland had two groups of SPC applications concerning a particular antigen or antigens used in the production of vaccines that contain multiple antigens.  The first group defined the product for which the SPC is sought in terms of the combination of antigens that are the subject of the marketing authorisation (“MA”).  It was accepted by Queensland that the effect of Medeva was that these SPC applications did not satisfy Art 3(a) of the SPC regulation as the patents do not identify all the antigens in the wording of the claims.

The second group of applications defined the product for which the SPC is sought as a single antigen out of the multiple antigens that were the subject of the MA.  Art 3(a) was not in issue for these applications but an objection on the basis of Art 3(b) had been raised by the UK patent office.  The patent office accepted that certain of the second group of SPC applications satisfied Art 3(b) – it was sufficient that the antigen defined as the product in the SPC application was one of the multiple antigens which were subject of the MA.  However, it was agreed by the parties that some of the second group of applications needed to be remitted back to the UK-IPO to consider whether Art 3(d) was satisfied, namely, was the specified MA the first MA for the product (i.e. the antigen)?

Finally, an interesting point was discussed - certain commentators have suggested that Medeva has introduced a “one SPC per patent” rule.  Although this was not a point that the UK court had to decide in this case, counsel for the Comptroller stated that it is the UK patent office’s view that Medeva does not change the law set down in Biogen (C-181/95) and that the rule remains as one SPC per product per patent.

Read the judgment (in English) here.

Head note: Ian Turner

FR - Biogaran v. Negma: Compensation of damages caused by an interim injunction on a patent later found to be invalid

Biogaran v. Laboratoire Medidom, Laboratoires Negma, Tribunal de grande instance (3rd chamber, 3rd division), Paris, 27 January 2012, Case No. 09/17355, with thanks to Sabine Age and Marta Mendes Moreira, Veron & Associes, for sending in the judgment, summary and translation in English

A patentee who has obtained an interim injunction from a court to restrain infringement of a patent which is subsequently held invalid must compensate the defendant for losses sustained as a result of being prevented by the injunction from selling allegedly infringing goods.

The judgment handed down on 27 January 2012 by the tribunal de grande instance of Paris is the first reported decision of a French court on the consequences of the enforcement of a preliminary injunction against an alleged infringer of a patent which is later held invalid.

 

BE - Lundbeck v. Ratiopharm (Teva) and Tiefenbacher (escitalopram)

H. Lundbeck A/S v. Alfred e. & CO. Tiefenbacher GmbH, Ratiopharm GmbH, Ratiopharm Belgium N.V and Teva Pharma Belgium N.V., Court of Appeal Brussels, Belgium, 14 February 2012, Case No. 2011/AR/2821, with thanks to Steven Cattoor, Hoyng Monegier, for providing the case and a head note.

As reported earlier (see here), on 3 October 2011 the Brussels Commercial Court revoked Lundbeck’s Belgian escitalopram SPC and declared its decision immediately enforceable, notwithstanding appeal.

Lundbeck appealed this first instance decision and, by way of preliminary issue, requested that the ordered immediate enforceability be declared illegal. By judgment of 14 February, the Brussels Court of Appeal upheld Lundbeck’s appeal on this point and found that a first instance decision revoking a patent or SPC cannot legally be declared provisionally enforceable. According to the Court of Appeal, such immediate enforceability is contrary to Article 51§2 of the Belgian Patent Act (BPA), which, in view of Articles 18 and 19 SPC Regulation and in absence of any specific provision relating to SPC’s, is held to be applicable to SPC’s.

Deviating from the general rule under Belgian procedural law in this respect, Article 51§2 BPA stipulates that an application before the Supreme Court against a patent revocation decision rendered by an appellate court, has a suspensive effect. Allowing the immediate enforceability of a nullity decision in first instance is irreconcilable with the necessary suspensive effect of a cassation request under Article 51§2 BPA and would render the latter devoid of any meaning. A revoked patent/SPC cannot be declared valid again. The Court added that, given the erga omnes (and ex tunc) effect of a revocation decision, the legal guarantee under the Belgian Code of Civil Procedure providing that the party enforcing a judicial ruling does so at its own risk, cannot offer sufficient protection for the patentee.

This is the first time a Belgian court has ruled on the question of the (il)legality of the provisional enforceability of a nullity decision. The merits of the case will be heard shortly.

Read the decision (in Dutch) here.

UK - MedImmune v Novartis

MedImmune Limited v Novartis Pharmaceuticals (UK) Limited & another, High Court, 3 February 2012, Case No. HC11C01304, Neutral Citation Number: [2012] EWHC 181 (Pat)

On Friday 11 February 2012, Mr Justice Arnold handed down his second judgment in the ongoing litigation between MedImmune and Novartis.   

In his first judgment in July 2011 (which may be read here), Mr Justice Arnold held that MedImmune’s patents, relating to antibody phage display, were not infringed by Novartis’ dealings in ranibizumab (trade name Lucentis), a treatment for wet age-related macular degeneration, in the UK and were invalid.  That decision is under appeal.

This second judgment dealt with MedImmune’s UK SPC for ranibizumab and represented the UK Courts’ first consideration of the recent CJEU rulings in Medeva (C-322/10), Queensland (C-630-10) and the associated line of references.

In his judgment, Mr Justice Arnold found that the guidance provided by the CJEU in Medeva is not sufficiently clear.  The Judge expressed his disappointment that the CJEU did not actually answer Question 1 of the Medeva questions.  He held that the test laid down by the CJEU and its progeny is unclear save in its rejection of the infringement test in respect of combination cases.  Mr Justice Arnold went on to say that “regrettably”, further references will be required to clarify what is meant by “specified or identified in the wording of the claims”. 

Notwithstanding these views, in this case, the Judge did not make a further reference to the CJEU.  Instead, he decided that the Court of Appeal will be able to consider whether to make a reference at the appropriate time.  This judgment does not therefore take matters much further forward in the debate about the meaning of the CJEU decisions save that it has now been acknowledged by Mr Justice Arnold that there is still a great deal of uncertainty about the appropriate test to use to assess compliance with Article 3(a) of the SPC Regulation.

Read the decision (in English) here.

Head note:  Sarah Routledge