EPLAW Patent Blog

EU - Seminar series on the UPC

"Bird & Bird is running a series of seminars in 2013, across Europe, on the UPC. There will be various speakers at each seminar discussing how they see patent filing strategies and litigation before the UPC working in practice. This will include the latest news on the implementation of the system and the issues that are not covered by the Regulations and the Agreement, as well as a strategic view on the new choices for patent protection and for litigation. Although this is a unified system, there will be differences in approach at the various locations, which means you have to choose your options carefully."

Speakers include Paul van Beukering, Manager of Intellectual Propety Unit, Ministry of Economic Affairs, The Netherlands and Samuel Granata, Judge in the commercial court of Antwerp (Belgium).

Seminar dates and locations are as follows:

Thursday 7 March: The Hague
Thursday 21 March: Munich
Thursday 18 April: London
Friday 31 May: Paris

The program of the first meeting is posted below:

UK - IPCOM v HTC

IPCom GmbH & Co KG v HTC Europe Co Ltd and Nokia OYJ (Nokia Corp) v IPCom GmbH & Co KG [2013] EWHC 52 (Pat)

This was an application concerned with whether particular individuals on IPCom’s side should be permitted to inspect confidential licensing documents disclosed in the actions by HTC and Nokia pursuant to orders of the court.

Background
The proceedings in which this application was made are concerned with the determination by the court of the appropriate FRAND (fair, reasonable and non-discriminatory) terms for a licence under IPCom’s standard essential patent EP (UK) 1 841 268, including a royalty to be paid by Nokia and HTC to IPCom. Pursuant to orders made by Roth J, Nokia and HTC had served statements of case setting out the method by which they contended that a FRAND royalty rate should be calculated, which included schedules of comparable licences on which they relied. Roth J had ordered that any such licences should be disclosed to IPCom.

The parties were unable to agree on the individuals entitled to see the disclosure material, although an interim arrangement was arrived at under which the parties’ UK solicitors, counsel and (upon provision of signed undertakings) independent licensing and economics experts, were permitted to inspect the material. On 30 July 2012 IPCom issued an application, seeking an order that the court impose a confidentiality regime in which inspection should be by legal advisers and counsel, named experts (subject to confidentiality undertakings in the agreed form), and up to two named individuals from IPCom (again, subject to confidentiality undertakings in the agreed form).

UK - Omnipharm Limited v Merial

Omnipharm Limited v Merial, Court of Appeal (Civil Division), London, UK, 23 January 2013, Case No [2013] EWCA Civ 2

This was an appeal against the judgment of Floyd J, dated 21 December 2011, following a trial of an action brought by Omnipharm to revoke two of Merial’s patents, EP (UK) 0 881 881 (the ‘881 patent) and EP (UK) 2 317 564 (the ‘564 patent) on the grounds of obviousness and insufficiency.
The patents in suit both relate to ‘spot on’ formulations of parasiticide for protecting small animals against ticks and fleas; the ‘881 patent relating to formulations of fipronil and the ‘564 patent relating to fipronil in combination with an insect growth regulator (“IGR”).  The patents protect Merial’s “Frontline” products which provide Merial with global sales of approximately $1 billion per year.  

After allowing Merial’s proposed amendments, the trial judge declared the ‘881 patent valid, but found the ‘564 patent invalid for insufficiency.  He also ordered Merial pay 40% of Omnipharm’s costs.  Merial appealed.  By way of contingent cross-appeal, Omnipharm contended that if the ‘564 patent was found to be sufficient, the judge would or ought to have found it invalid for obviousness and by parity of reasoning, should also have found the ‘881 patent invalid for obviousness. 
The Court of Appeal upheld the trial judge’s decision on insufficiency. As a result the cross-appeal was not pursued.

NL - Remu v. Knoop Machinery & Waterking

Remu OY v. Knoop Machinery B.V. & Waterking B.V., District Court The Hague, The Netherlands, 9 January 2013, Case/Docket No. 415046 / HA ZA 12-354

Accelerated patent proceedings on the merits with respect to Remu's patent for a Pontoon crawler track assembly, EP 1 727 687 ("EP687"), the characterizing portion of which saw to the breadth of the pontoon crawler track assembly being adjustable, to allow both use in a narrowed position (eg. for road use) and a broadened position (eg. for maximum stability when operating in water).

Remu sought to enforce its patent against the two Dutch sister companies Knoop and Waterking, who both market amphibian tracked vehicles. In an earlier case of 2 November 2012, between Remu and RDS France SARL on one side and Sodineg SARL, Tecman SARL and Entreprise Leriche SAS on the other side, the French Tribunal de Grande Instance de Paris judged that claims 1, 2, 5, 6 and 10 of the French part of EP 687 were novel and inventive. The Court of The Hague finds differently, albeit with several additional pieces of prior art than were used in the French proceedings.

EU - Unitary Patent / Final texts of the “patent package”

EU Patent / Unitary patent protection – final texts of the “patent package”

After political agreement had been reached on the patent package on December 11, 2012, the text of the three legal instruments were finalised. Regulation 1527/2012 on the creation of unitary patent protection and Regulation 1260/2012 on the translation arrangements were adopted on December 17, 2012 and published in the Official Journal L 361 of December 31, 2012.

The Agreement on a Unified Patent Court (UPC) was published as Council doc. 16351/12 of January 11, 2013. It is an updated and consecutively numbered version of the draft dated November 14, 2012 16222/12 containing mainly editorial amendments. According to Article 84(1), the Agreement is open for signature on February 19, 2013.

Surprisingly, the final text still contains in Article 33(2) the obligation of a regional division to refer, at the request of the defendant, an action for infringement to the central division if the infringement has occurred in the territories of three regional divisions. This provision which appeared in brackets in the draft may substantially impair the readiness of patentees to bring an action before a regional division.

UK - Xena Systems v. Cantideck and Conquip Industrial

Xena Systems Limited v. (1) Cantideck (2) Conquip Industrial, Patents County Court, HH Judge Birss QC, London, UK, 18 January 2013, Case No. [2013] EWPCC 1

This judgment relates to an inquiry into damages for patent infringement, following the defendants’ submission to judgment on liability in the main proceedings. In it, following consideration of a number of heads of damage claimed by the patentee, Xena Systems Limited (“Xena”), His Honour Judge Birss QC awarded damages in the amount of £233,986.76 for the total lost income caused by the defendants’ patent infringement together with interest losses at 8% for a certain period.

The patent-in-suit, EP (UK) 1 392 939, owned by Xena, concerns an improved type of rolling platform used in the construction industry (e.g. to allow materials to be loaded on and off by crane). Another, non-infringing, type of platform used in the construction business is known as a “fixed” platform. At the start of the period relevant to infringement (which was 2006-2007), Xena was the market leader in loading platforms in the UK. It hired out (but did not sell) both rolling and fixed platforms. Its only other competitor at the time in relation to rolling platforms was a company called Cranetech, which sold or hired non-infringing rolling platforms.

Young EPLAW 2013 - Mark your Calendar

EPLAW is pleased to announce that the annual Young EPLAW meeting will be held on Monday 22 April 2013 in Brussels

The Young EPLAW meeting is a get-together organized especially for young patent lawyers (up to 36 years) who work in the office of an EPLAW member. It offers an excellent occasion to meet young colleagues from all over Europe.

Further information will follow shortly. The programs of past Young EPLAW meetings can be found on the Eplaw website here.

FR - Novartis v. Actavis - Cour de cassation

Novartis v. Actavis, French Cour de cassation, Paris, France, 15 January 2013, Case number  A 11-26.632, with thanks to Pierre Véron and Nicolas Bouche, Véron & Associés, for providing the judgment, a translation in English and a summary

The French Cour de cassation follows the Court of Justice of the European Union’s ruling of 9 February 2012 in the parallel UK case and decides that the proprietor of an SPC for product A may prevent third parties from marketing a drug combining A + B.

Novartis was the proprietor of a basic patent (expired on 12 February 2011) covering valsartan and of an SPC for the product valsartan, a drug against hypertension.

Actavis marketed in France a drug containing valsartan and another active ingredient, HCTZ, a diuretic.

Novartis sought a preliminary injunction against Actavis, which was granted by the tribunal de grande instance on 28 January 2011, but the cour d’appel de Paris reversed it on 16 September 2011 on the grounds that “although the medicinal product valsartan + HCTZ contains the active ingredient valsartan, it is not the "product" valsartan within the meaning of the Regulation but another "product" comprising a combination of active ingredients”.

Novartis brought the case before the Cour de cassation, the highest French court for civil matters.

The legal question (the interpretation of Articles 4 and 5 of Regulation (EC) No 469/2009 of 6 May 2009 concerning the supplementary protection certificate for medicinal products) was whether the SPC covering the product valsartan was infringed.

In other words, whether the owner of an SPC for product A can prevent the marketing of an A + B product where B is also an active ingredient.

SE - EveryMed v. Roche Diagnostics

EveryMed AB v. Roche Diagnostics GmbH, Svea Court of Appeal, Sweden, 27 June 2012, Docket No. T 5531-11

On appeal of a District Court of Stockholm judgment in joint infringement and invalidity proceedings, the Svea Court of Appeal confirmed the District Court's judgement by dismissing Everymed’s claim that Roche’s European patent EP0622119 (System for dispensing test elements) was invalid as far as concerns Sweden. However, unlike the District Court, the Court of Appeal concluded that the patent-in-suit was not infringed by Everymed (through its system “EveryX3”) and therefore reversed the District Court’s judgment on damages, injunction and reimbursement of legal costs.

The key differences in the assessment by the Court of Appeal, compared to the assessment by the District Court, was that the Court of Appeal made a stricter interpretation of two terms in the patent claims and whether they should be interpreted as a requirement that a test element completely leaves the chamber of the device or whether it also includes a system in which the test element partially stays in the chamber. For its conclusion that the scope of patent protection was limited to a system in which the test element completely leaves the chamber, the Court of Appeal found support in the linguistic meaning of the relevant terms and also how the technical problem was formulated in the description.

Interesting to note from the Court of Appeal judgement is, to begin with, that it was established that a patent cannot be declared partially invalid upon request from the counterpart to the patentee only, i.e. when the patentee has not requested in its defence that the patent be limited at the risk of otherwise being declared invalid in its entirety (a possibility that was introduced in the Swedish Patents Act in 2007 for the implementation of the EPC 2000). The background was that Everymed requested that one (independent patent claim) of the (in total 13) patent claims of Roche’s patent be declared invalid.

UK - Dr Reddy’s Laboratories v Warner-Lambert

Dr Reddy’s Laboratories (UK) Ltd and Dr Reddy’s Laboratories Ltd v Warner-Lambert Company LLC, 20 December 2012, Patents Court, UK, Case No. HC 11C03027

This is a UK decision clarifying certain provisions of Regulation (EC) 1901/2006 (the “Paediatric Regulation”) which applies in relation to the grant of a six month extension to Supplementary Protection Certificates (SPCs), and of Regulation (EC) 469/2009 (the “SPC Regulation”).  The Court held that deferrals under the Paediatric Regulation can be requested on the ground where the safety of the product was a concern, or the paediatric study would have caused the delay in the authorisation for adults.  Further, Article 45(3) of the Paediatric Regulation is transitional in nature and has no application in cases where all the studies included in a paediatric investigation plan were initiated after the regulation came into force on 26 January 2007. 

The Court also clarified that Article 16 of the SPC Regulation grants discretion to national bodies whether or not to revoke an extension if the conditions of Article 36 of the Paediatric Regulation are not met.