EPLAW Patent Blog

NL - Boehringer v. Teva

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.

FR - Hexal and Sandoz v. Boehringer Ingelheim Pharma

Hexal A.G. and SAS Sandoz v. Boehringer Ingelheim Pharma GbmH & CoKG, Tribunal de Grande Instance, Paris, France, 7 May 2010, Docket No. 08/12537, with thanks to Pierre Véron, Véron & Associés for sending in the case and the translation

In a case dealing with the use of (S)(+)-2-ethoxy-4-[N-[1-(2-piperidinophenyl)-3-methyl-1-butyl]aminocarbonylmethyl]-benzoic acid as the active principle in a drug for the treatment of diabetes, the First Instance Court of Paris recently decided:

That both prior art documents produced by the claimants weren’t novelty-destroying prior art since “none of these two patents studied the specific effect of the S(+) enantiomer compared with the racemate of 2-ethoxy-4-[N-[1-(2- piperidinophenyl)-3-methyl-1-butyl]aminocarbonylmethyl]-benzoic acid.”

Regarding the inventive step, the Court points out that an effect considered as unexpected may involve an inventive step but also that “in the cases where the state of the art is taken into consideration, the person skilled in the art would arrive in an obvious manner at a result which corresponds to the terms of a claim, considering that he could expect the combination of the teachings of the documents comprised in the state of the art to bring an advantage, such a claim lacks inventive step, independently from the fact that a possibly unexpected additional effect is obtained.”

Whereas the Court ruled that claim 1 shall not be invalidated for lack of novelty, it nevertheless held claims 2 and 3 invalid for lack of novelty.

Read the decision (in French) here.
Read the decision (in English) here.

Head note: Gwendal Barbaut