EPLAW Patent Blog

UK – Abbott v. Medinol

Abbott Laboratories Limited v. Medinol Limited, Patents Court, Chancery Division, High Court of Justice, London, UK, 12 November 2010, [2010] EWHC 2865 (Pat)

In a case concerning three patents for coronary stents, Abbott applied for declarations of non-infringement and orders for revocation in respect of EP (UK) 0 846 449 (‘449), EP (UK) 1 181 901 (‘901) and 1 181 902 (‘902). Medinol subsequently counterclaimed for infringement in respect of eight Abbott stents: small and medium Vision, small and medium Multi-Link 8, small and medium Xience and small and medium Xience Prime. Mr Justice Arnold held the ‘449 and ‘902 patents to be valid and ‘901 patent to be invalid. Medinol’s allegations of infringement all failed.

FR - Institut Pasteur v. Abbott France

Institut Pasteur v. S.A.S. Abbott France, Cour d'Appel of Paris, France, 8 October 2010, Case no. 09/08135

Institut Pasteur contended that Abbott infringed several of its patents concerned with the detection of HIV in human blood and was claiming royalties in excess of €7 000 000. Abbott replied that it was operating under a licence from the US NIH (National Institute of Health) which allowed it to use certain patents belonging to Institut Pasteur. Abbott was thereby referring to agreements signed in 1987 and 1994 between Institut Pasteur and NIH to settle their dispute as to the ownership of patents about HIV detection. The Court of Appeal of Paris sided with Abbott and dismissed Institut Pasteur’s claims. Affirming a lower court judgment handed down on 21 January 2009, it held that it “results from the context that governed the elaboration of the 1994 agreement, which must be read in reference to the 1987 agreement, from the purpose which the parties declared they wanted to pursue and from the definition of the “Licensed Product”, that the gp 110 (the accused protein) falls within the scope of the licensed products”.

Read the decision (in French) here.

Read the English translation of the French decision here (with thanks to Véron & Associés).

Headnote and summary: Véron & Associés

NL - Bayer Healthcare v. Abbott

Bayer Healthcare LLC v. Abbott B.V., District Court The Hague, The Netherlands, 20 October 2010, Case No. 356145 HA ZA 10-57, with thanks to Geert Theuws, Howrey, for sending in the judgment

The District Court of The Hague invalidates the Dutch part of Bayer's patent due to insufficiency. Bayer argues that Abbott's high affinity monoclonal TNF-alpha antibody Humira falls under the claims of its patent that relates to human monoclonal TNF-alpha antibodies. However, the method disclosed in Bayer's patent does not enable the skilled person to make such high affinity monoclonal antibodies. The court explains that it deviates from the decision of the TBA regading Bayer's patent because the TBA concluded that the claim did not see on high affinity antibodies. Now Bayer argues that high affinity antibodies do fall under the claim and the court finds that the claims do encompass high affinity antibodies but that the patent does not enable the skilled person to make these. Therefore the court finds that the patent is invalid for insufficiency, because the claims are too broad. The court finds further support for this in the decision T 1063/06, because in this situation the skilled person cannot carry out Bayer's invention within the entire scope claimed without undue burden.
 
Read the judgment (in Dutch) here.

Head note: Paul van Dongen

UK - Abbott v. Medinol

Abbott Laboratories Limited v. Medinol Limited, Patents Court, Chancery Division, High Court of Justice, London, UK, 1 July 2010, [2010] EWHC 1731 (Pat)

The Patents Court has dismissed Abbott’s application for specific disclosure of documents in an action concerning medical stents.

Abbott commenced revocation proceedings in respect of three patents owned by Medinol: EP (UK) 0 846 449, EP (UK) 1 181 901 and EP (UK) 1 181 902. Abbott also requested a declaration of non-infringement of the three patents in respect of its Vision, Xience and Multi-Link 8 stents. Medinol counterclaimed for infringement of EP (UK) 1 181 902.

Abbott requested specific disclosure of the documents relating to the evidence given by Medinol’s witnesses, Dr Snyder and Dr Richter, in certain proceedings concerning the foreign equivalents of the three patents. Abbott submitted that the disclosure was necessary because a number of points of construction were in issue concerning various terms and phrases used in the claims of the patents.

Mr Justice Kitchin decided that it was not appropriate to order the disclosure requested for four reasons. First, the issue of claim construction was ultimately a matter for the Court and was a question of law. Second, the proceedings in the US concerned different stents and were decided according to different  substantive and procedural laws. Third, there was no suggestion of any inconsistency between the evidence given by the witnesses in the foreign proceedings. Fourth, the disclosure sought would be wholly disproportionate to any conceivable benefit that the documents in question might bring to the proceedings.

Read the judgment (in English) here.

Head note: Rob Fitt

EPO - Enlarged Board of Appeal decides on dosage regime - Swiss-type claims no longer available

EPO, Enlarged Board of Appeal, 19 February 2010, Decision No. G 02/08 - Dosage regime/ABBOT RESPIRATORY

The Enlarged Board of Appeal (EBA) answered the questions referred to it in T 1319/04 (OJ EPO 2009, 36) as follows:

Question 1:

Where it is already known to use a medicament to treat an illness, Article 54 (5) EPC does not exclude that this medicament be patented for use in a different treatment by therapy of the same illness.

Question 2:

Such patenting is also not excluded where a dosage regime is the only feature claimed which is not comprised in the state of the art.

Question 3:

Where the subject matter of a claim is rendered novel only by a new therapeutic use of a medicament, such claim may no longer have the format of a so called Swiss-type claim as instituted by decision G 5/83. A time-limit of three months after publication of the present decision in the Official Journal of the European Patent Office is set in order that future applicants comply with this new situation.

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.