EPLAW Patent Blog

FR - Institut Pasteur v. Chiron Healthcare & Novartis / Cour de cassation

Institut Pasteur v. Chiron Healthcare & Novartis Vaccines & Diagnostics, French Cour de cassation, 23 November 2010, Case No. 1194 F-D, with thanks to Pierre Véron, Véron & Associés, for sending in the judgment, summary and translation in English

The French Cour de cassation gives here its first decision in a case for infringement of a molecular biology patent (European patent No. 178 978 relating to “cloned DNA sequences, hybridizable with genomic RNA of the LAV” covering a method for detecting HIV).

It rejects the appeal on points of law lodged by claimant Institut Pasteur against a judgment of the Cour d’appel of Paris, 4 March 2009 available here which dismissed the case.

The judgment confirms how Article 69 EPC should be applied to determine the scope of a patent (in the present case, the court does not admit that, after having narrowed the scope of its claims during the opposition procedure to circumvent prior art, the claimant tries and recapture the initial scope during the infringement proceedings).

It also contains a discussion on infringement by equivalence, according to the French theory whereby “infringement by equivalence presupposes that the patented mean does fulfil a new function” the court decides that the patented mean at issue did not fulfil any new function.

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

Read the previous post here.

FR - Institut Pasteur v. Chiron

Institut Pasteur v. Chiron Healthcare c.s., appeal in infringement proceedings, Cour d'Appel, Paris, France, 4 March 2009, Docket No. 07/08437, with thanks to Pierre Véron, Véron & Associés

Even a pioneer patent cannot be granted a general scope if its claims are drafted using restrictive words.

A non-ambiguous claim with a narrow scope cannot be granted a general scope on the pretext of an interpretation when, in particular, the patentee was forced to limit the scope of the claim during the grant and opposition procedures in order to be distinguished from the prior art.

The patentee, which amended its claims to confer them a restricted scope, cannot, without damaging the legal certainty of third parties, allege that the amendments were not necessary, that the restricted claims would have the same scope as the initial broader claims and that the prior art documents having motivated the amendments would not be relevant.

Institut Pasteur cannot use the doctrine of equivalents, since claim 8 does not cover the general means but the specific means. 

Read the judgment (in French) here.

Read the judgment (in English) here.