EPLAW Patent Blog

UK - Danisco v. Novozymes

DuPont Nutrition Biosciences ApS (formerly Danisco A/S) v. Novozymes A/S, High Court of Justice, Chancery Division, Patents Court, London, UK, 7 February 2013, [2013] EWHC 155 (Pat)

The Patents Court granted Danisco’s application for documents disclosed by Novozymes in the course of the UK action to be used in proceedings elsewhere.

In 2010 Danisco commenced proceedings to revoke Novozymes’ patent, EP (UK) 1 804 592 and in late 2011 Novozymes counterclaimed for infringement. Before the action came to trial, the patent was revoked in proceedings before the EPO. Danisco subsequently applied for permission to deploy documents disclosed in the UK action in proceedings elsewhere in Europe.

The general rule under the Civil Procedure Rules is that disclosed documents can be only be used for the purposes of the proceedings in which they are disclosed unless they are referred to in open court. As the trial had not taken, the disclosed documents had not been referred to open court. However, at an earlier hearing in the dispute, Novozymes had requested an adjournment of the trial and this was granted by the Court on the condition that Danisco would not be prejudiced in litigation elsewhere by not being able to use the disclosed documents which would otherwise have been referred to at the trial.

Given that the permission to use the disclosed documents was the price that Novozymes had paid for the adjournment that it had previously been granted, Mr Justice Floyd gave Danisco permission to use the disclosed proceedings in proceedings elsewhere in Europe regarding the validity and/or infringement of the patent and related rights in the same patent family.

Read the judgment in English here.

Head note: Rob Fitt

NL - Astellas Pharma v. Synthon

Astellas Pharma Inc. v. Synthon B.V., District Court Eastern Netherlands/The Hague, The Netherlands, 1 February 2013, Case No.234794 / KG ZA 12-533, C/09/429848 / KG ZA 12-1189, with thanks to Willem Hoyng, Frank Eijsvogels and Robin van Kleeff, Hoyng Monegier, for sending in the judgment and a translation in English

Astellas holds a patent for a sustained release preparation, and claimed that Synthon’s sustained release tamsulosin products infringe  upon that patent. The PIL listed inter alia the Dutch entity Synthon B.V. (“Synthon”) as manufacturer of the products. Following leave by the Court, Astellas provisionally seized documents  at the premises of Synthon, for evidence that Synthon had indeed committed infringing or unlawful acts.

Subsequently, the provisional relief judge was requested to order Synthon to grant access to the documents.  This claim succeeded. The judge reiterated that access to documents which are seized as evidence can only be granted if claimant is able to show to a reasonable degree that there is an infringement, and is able to sufficiently rebut the arguments made by the other side that there is not. The confidentiality of the seized documents also plays a role: the higher the confidentiality, the more likely the infringement should be to gain access (and vice-versa).

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.