Boehringer Ingelheim Pharma GmbH & Co.KG v. Teva Pharma B.V., Teva Pharmaceuticals Europe B.V., Pharmachemie B.V., District Court Utrecht/The Hague, Preliminary Injunction proceedings, 15 August 2012, Case No. KG ZA 12-319 KG ZA 12-559
A Dutch Teva company (“Teva NL”) holds a European MA for drugs with nevaripin as active substance. On the basis of this MA, the drugs are marketed by a Portuguese affiliate of Teva NL in Portgual. Boehringer Ingelheim holds a Portuguese SPC that covers the Teva product and started preliminary injunction proceedings against Teva NL in The Netherlands, claiming an injunction against alleged unlawful acts, consisting in short of involvement by Teva NL in the infringement on the Portuguese SPC by its Portuguese affiliate.
Teva NL inter alia raised invalidity of the Portuguese SPC as a defense. The President of the Court of The Hague questions in the context of Article 22(4) of the EEX Regulation whether GAT/LuK is applicable in the case at hand, as the claim for an injunction was not based on patent infringement but on unlawful act. He, however, leaves this point undecided as jurisdiction could be based on Article 31 of the EEX Regulation.
Validity is assessed according to Portuguese law and the Portuguese SPC was held to be novel and inventive. On inventive step, an earlier Boehringer patent was chosen as closest prior art. This earlier patent disclosed a molecule similar to nevaripin but with a different chemical structure. According to the President, small differences in chemical structure can amount to great differences in reactivity, and Teva NL did not submit additional prior art from which it would follow that the man skilled in the art would have an incentive to amend the chemical structure to that of nevaripin with a reasonable expectation of success to obtain a substance with a higher efficacy. Furthermore, according to the President, Teva NL could be deemed to be aware of the Portuguese SPC. Provoking or facilitating infringement by a Portuguese affiliate, that necessarily needed Teva NL’s permission to market the infringing product in Portugal, was held to constitute an unlawful act against Boehringer, and an injunction was awarded.
Read the decision (in Dutch) here.
Head note: Geert Theuws