EPLAW Patent Blog

FR - Sandoz v. Eli Lilly

SAS Sandoz v. Eli Lilly and Company, Court of Appeal of Paris, France, 13 January 2012, Case No. 10/17727, with thanks to Dominique Menard and Stanislas Roux-Vaillard, Hogan Lovells, for providing the judgment and an extended summary in English

On 13 January 2012, the Court of appeal of Paris confirmed the judgment which found that the French part of Eli Lilly's patent No. EP 0 577 303 regarding a process for stereoselective glycosylation shows inventive activity, is sufficiently disclosed and consequently valid. The failing generics company is ordered to pay half a million Euros in attorney's fees.

Read the entire summary (in English) here.

Read the judgment (in French) here.

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

DE - Kraftfahrzeugkarosserie

Kraftfahrzeugkarosserie, German Federal Court of Justice, 18 February 2010, File No. Xa ZR 52/08, with thanks to Bernhard Arnold, Arnold-Ruess

Depicting an element in a drawing which is referred to in the description or the patent claims can be sufficient to disclose an element as being part of the invention. The relevant test is whether the construction according to the elements of the invention taking into account the overall disclosure in the view of skilled man appears as a possible embodiment of the invention according to the patent application.

The Federal Court of Justice decided that patent claims, description and drawings of the patent application documents are measures of disclosure of equal relevance. The court had taken a different view under the old patent regime in force until 1980, but now confirmed that the old approach is no longer valid. Claimant had argued that one element of the invention, which defendant had added during the proceedings to save the patent, was not sufficiently disclosed because the function of the element was not mentioned in the description or the claims. The court found that the skilled man understood the function from seeing the drawing alone, in which the element was depicted.

Read the judgment (in German) here.

DE - Thermoplastische Zusammensetzung (thermoplastic composition)

Thermoplastische Zusammensetzung (thermoplastic composition), invalidity proceedings, Federal Supreme Court, Germany, 25 February 2010, Docket No. Xa. ZR 100/05

A workable disclosure of the invention might be denied if the protected subject-matter is generalized by open area specifications for physical characteristics in the patent claim beyond the solution given to the person skilled in the art with the entirety of documents that far that the patent protection exceeds the contribution of the invention to the prior art. If a method is disclosed providing a substance or other products the physical characteristics of which come under the open area, the workable, disclosed product according to the invention can be characterized in that it is obtainable through the indicated method.

Read the decision (in German) here.