EPLAW Patent Blog

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.

BE - Claim for “guiding surface” is not limited to shape depicted in drawing

Germeau Carrière v. Core Distribution and Urban Sporting Goods, expedited proceedings on the merits, Liège court of appeal, Belgium, 21 February 2012, case number 2010/RG/1369  

The respondents (Core Distribution and Urban Sporting Goods) are the co-proprietors of a European patent for an “extending ladder and associated manufacturing methods” (EP 1 448 865).  One of the features of the patented ladder is that in contains columns to which rings are coupled with an interior guiding surface for contacting the exterior surfance of another column. The appellant, who was found to infringe the patent at first instance, argued that the claim should be construed to mean that the said guiding surface was flat and that, since its own guiding surface allegedly had a different shape, there could therefore be no infringement.

The appellant found support for its argument in the description (§ 42) and the drawings (figure 7) of the patent specification, which described the embodiment of figure 7 as “[columns] with … shapes including flat surfaces … so as to preclude relative rotation between the columns”. The court of appeal rejected this argument and held that, on proper construction of the claims, figure 7 only depicted one possible embodiment of the invention and that no such limitation could be read into claim 1 or any other claim of the patent. What was claimed was a guiding surface, not a flat guiding surface. The court thereby confirmed the first instance decision.

However, the court reversed the first instance decision to the extent that it held that a court adjudicating a patent claim in expedited proceedings on the merits could not order to the restitution of the costs of the saisie carried out prior to the start of the proceedings. The reason for this being that no damages can be awarded in expedited proceedings. According to the court of appeal, however, these costs do not amount to damages, but to procedural costs, and could therefore be reimbursed to the respondents in expedited proceedings, without needing to start separate genuine proceedings on the merits.

Read the decision (in French) here.

Head note: Philippe de Jong

SE - Hospira v. Aventis

Hospira UK Limited and Hospira Enterprises B.V. v. Aventis Pharma S.A., District Court of Stockholm, 7 October 2011, Docket No. T 19169-10

The Hospira companies held the marketing authorization for and imported the pharmaceutical Docetaxel Hospira for Sweden. Aventis Pharam S.A. held three EP patents for Sweden and had in other jurisdictions claimed that Docetaxel Hospira infringed the EP patents (and in some jurisdictions requested and been granted ex parte preliminary injunctions). In preparation for the launch of the pharmaceutical in Sweden, the Hospira companies requested that the District Court of Stockholm should invalidate the patents for Sweden. Aventis first denied the request, referring inter alia to on-going settlement negotiations, but eventually admitted that the patents be invalidated. The only contentious issue for the Court to decide was therefore whether the Hospira companies should be reimbursed for its legal costs.

In its reasoning, the Court stated that a patent can only be invalidated by a court decision and that someone requesting an invalidity order therefore was forced to commence court proceedings irrespective of the patent holder's position. Thus it could not be considered an "unnecessary trial" for which a winning party may not be reimbursed for its legal costs under the Swedish Code of Judicial Procedure, irrespective of the fact that the writ of summons had been submitted without prior correspondence with the patent holder. Aventis was therefore order to reimburse the Hospira companies' "reasonable" costs, which was less than half of the total costs claim. The Court did not take any particular notice of Aventis' argument that it could have agreed to voluntarily cancel the patent which can be done by application to the Swedish Patent and Registration Office). 

Read the judgment (in Swedish) here.

Head note: Erik Ficks

SE - Centraction v. Furåsen and Åss

Centraction AB v. V M Furåsen AB and ÅSS-Processventilation AB, Stockholm District Court, Stockholm, Sweden, 10 December 2010, Case No. T 6886-10

A Swedish importer and vendor of hose reels, Centraction AB (“Centraction”), raised an invalidity claim against the Swedish patent 501 050 granted for a hose reel device invented by V M Furåsen AB (“Furåsen”) and produced and sold by ÅSS-Processventilation AB (“ÅSS”). The proceeding, however, came to mainly concern whether Centraction had intentionally caused an unnecessary litigation and should bear the litigation costs since Furåsen had let the patent lapse before the proceeding was initiated.

NL - Van Beelen Industrie en Handel v. Otter Ultra Low Drag

Van Beelen Industrie en Handel B.V. v. Otter Ultra Low Drag Limited, Court of Appeal The Hague, 30 March 2010, Case No. 105.006.802/01, with thanks to Huib Mars, Aries Advocaten

Van Beelen does not indirectly infringe upon Otter's patent by delivering the so-called 'Stealth Rope' to trawl net makers. The rope is not to be considered as a 'means for working the invention, in respect of an essential part of the invention'. In addition, the rope is to be considered a product generally available in commerce.

The Court of Appeal does not reconsider its earlier decision regarding costs (that decision can be read here). The full costs according to the Enforcement Directive will therefore not be awarded as the proceedings were commenced before the expiry of the implementation term of the Enforcement Directive.

Read the decision (in Dutch) here.

EPO - No-show at oral proceedings before Board of Appeal in order to save costs may turn out to be expensive

EPO, Technical Board of Appeal 3.2.03, 18 November 2009, Decision No. T 212/07, not to be published in OJ, – Ancon CCL Limited (appellant/opponent) v. Normteq B.V. (respondent/patentee)

In a considerable number of cases, parties summoned to oral proceedings before the EPO do not appear. This is not only detrimental to the efficiency of the work of the EPO but may also cause superfluous costs for the adversary. Whereas, as a rule, each party has to bear its own costs, the departments of the EPO may, for reasons of equity order a different apportionment of costs.

In the reported case, the Board of Appeal had summoned the parties some three months before the date fixed for oral proceedings with a communication which was generally negative with regard to the opponent’s arguments on the issue of lack of novelty. The opponent abstained from commenting in substance and informed the Board one week before the appointed oral proceedings that it would not be attending oral proceedings in view of the high costs involved. The Board cancelled the oral proceedings and the patentee requested an apportionment of costs to cover the non-refundable travel and lodging costs of its representative and of the preparation costs for the oral proceedings.

UK - Jackson Report on English civil litigation costs recommends reform

Jackson Report on English civil litigation costs recommends reform, reported by Ed Barker, Baker & McKenzie

Lord Justice Jackson has published the final report of his wide ranging review of civil litigation costs in England & Wales.  He begins the report with a pithy foreword which sets the tone for the entire report (which runs to some 584 pages):

"In some areas of civil litigation costs are disproportionate and impede access to justice. I therefore propose a coherent package of interlocking reforms, designed to control costs and promote access to justice."

A full copy of the report, which is well worth a read by anyone regularly involved in civil litigation in England & Wales, can be downloaded here:

NL - Lundbeck v. Tiefenbacher, Centrafarm Services and Ratiopharm

H. Lundbeck a/s v. Alfred E. Tiefenbacher GmbH, Centrafarm Services B.V. and Ratiopharm GmbH, costs of procedure, Court of Appeal, The Hague, The Netherlands, 22 December 2009, Docket No. 200.039.432/01

Withdrawn application for the provisional examination of witnesses / expert opinion. Other parties object to such withdrawal if no full costs of the proceedings as based on the Enforcement Directive are paid. The Court of Appeal states that the Enforcement Directive does not distinguish between summons proceedings and application proceedings. Lundbeck's application relates to facts and grounds of a judgment by the District Court of The Hague regarding a patent (which judgment has been appealed) and is (thus) related to the enforcement of an intellectual property right. No room for the application of Article 289 Dutch Code of Civil Procedure. Lundbeck's application was declared inadmissible. Full costs are awarded (to the amount as agreed between parties).

Read the decision (in Dutch) here.

NL - Van Beelen Industrie en Handel B.V. v. Otter Ultra Low Drag Limited

Van Beelen Industrie en Handel B.V. v. Otter Ultra Low Drag Limited, Court of Appeal The Hague, 8 December 2009, Docket No. 258144/HA ZA 06-277, with thanks to Muriel van den Hazenkamp, Aries Advocaten

The Dutch Court of Appeal refuses to guarantee full costs in patent proceedings filed prior to expiry of the Enforcement Directive (Directive 2004/48) implementation deadline. The Court of Appeal refuses to interpret the national law in conformity with the Enforcement Directive since such an interpretation would impede the legal certainty. 

In principle, a party to Dutch legal proceedings is entitled to a guarantee for legal costs in case of a non-Dutch counter party. Van Beelen appealed the decision of the Court of first instance since the Court had only awarded a guarantee for the court-approved standard scale of costs in the proceedings. The Court of first instance had rendered its decision after the expiry of the implementation deadline of the Directive, but before the Dutch Government had taken definitive measures to implement the Directive. The case in first instance was filed prior to the expiry of the implementation deadline.

The Court of Appeal went on to consider that after expiry of the implementation deadline,  the national laws may be interpreted in conformity with the he Enforcement Directive since the norms contained in it are  (albeit open) unconditional and sufficiently precise and since interpretation in conformity with the Directive  (after the implementation deadline) meanwhile became common. Therefore, such interpretation no longer leads to legal uncertainty. This reasoning led to a full cost order in the appeal proceedings (which were filed after expiry of the implementation deadline).

Read the judgment (in Dutch) here.