EPLAW Patent Blog

FR - Novartis v. Sanofi / Valsartan (ex parte)

Novartis AG and Novartis Pharma v. Sanofi-Aventis France, Sanofi-Aventis Winthrop Industries and Zentiva K.S., the President of the Court of First Instance (ex parte preliminary injunction), Paris, France, 27 October 2011, Case No. 11/15302, with thanks to Pauline Debre, Bird & Bird, for providing a summary and comments in English

On 27 October 2011, the President of the Court of First Instance in Paris ordered ex parte preliminary injunctions against Sanofi-Aventis France, Sanofi-Aventis Winthrop Industries and Zentiva K.S. (hereinafter "Sanofi"), prohibiting the Valsartan generic Zentiva from being sold on the French market.

This ruling is important in two respects:

1. It is one of the first decisions in which an ex-parte preliminary injunction has been ordered in a patent case in France; and

2. It seems to conflict with a recent decision of the Court of Appeal in Paris on the extent of protection given by supplementary protection certificates.

Read the entire summary below the break:

 

NL - ex parte order Kedge Holding v. Roof Security

Kedge Holding B.V. v. Roof Security B.V., ex parte order of the District Court The Hague, The Netherlands, 26 October 2010, Case No. KG RK 10-2661

Kedge Holding owns European Patent EP 1 803 871 (EP 871) for an object provided with a safety device for a personal fall protection. Roof Security offers the Safeway safety device that was the object of previous infringement proceedings by Kedge Holding against Safeway. In its preliminary decision of 5 August 2010 the President of the District Court of the Hague held that EP 871 is valid, that the Safeway product is deemed a safety device within the meaning of claim 1 of EP 871 and that the Safeway product is an essential part of the claimed invention.

NL - Novartis v. Drogisterij.net

NOVARTIS A.G. v. DROGISTERIJ.NET B.V., the preliminary injunction judge of the District Court of The Hague, the Netherlands, 6 May 2010, Case No. KG RK 10-1214

European patent on contact lenses for extended periods of wear. The preliminary injunction judge order the requested ex parte injunction against the online lens retailer drogisterij.net. This is not the first of such actions by Novartis. Novartis is engaged in various proceedings concerning in its enforcement on this contact lens patent, most notably against competitor J&J for their ACUVUE OASYS lenses.

NL - Ex parte order based on misleading information

Franz Grimme Landmaschinenfabrik GmbH & Co, KG v. Steenvoorden Constructie B.V. and F.R.Steenvoorden Industrial Equipment B.V., ex parte order of the District Court The Hague, The Netherlands, 15 January 2010, Case No. KG RK 10-0055

Franz Grimme owns EP 730 399 (EP 399) for a device for separating potatoes from other materials such as soil, clods, stones, herbage, etc., particularly for potato harvesting machines. Steenvoorden offers such a machine, the “Evolution Separator” on its website. The machines are obtained from Scotts in the UK, a former distributor of Franz Grimme which has started to produce its own machines. Franz Grimme has obtained a verdict from the High Court of Justice (Patents Court) against Scotts, in which Scotts was found to have directly and indirectly infringed the British part of EP 399 with the Evolution Separator (verdict of November 3, 2009, Case No: HC08 C 00663).

Despite this, Steenvoorden claims on its website that Scotts won the proceedings in the UK, and continues to offer and sell the machines in the Netherlands, Belgium, Germany and possibly other countries. The court states that the misrepresentation on Steenvoorden’s website hampers Grimme in the exercise of its patent rights and therefore grants an ex parte order to remove the misrepresentation from the Steenvoorden website. The court does not grant a cross border order, since the website is directed to a Dutch audience and in the Dutch language.

Read the decision (in Dutch) here.

NL - Street Surfing v. X (ex parte)

Street Surfing LLC v. X, The Hague District Court, The Netherlands, ex parte injunction, 8 January 2010, Docket No. KG RK 10-02

The court grants an ex parte injunction (wave boards EP 1 511 541). The order is not declared enforceable on any day and at any time  before execution has been issued ('uitvoerbaar op de minuut, en op alle dagen en uren'). This, since (i) it was not sufficiently substantiated that the judgment should be enforceable during weekends, holidays, etc. and also considering the fact that X should be given sufficient time to comply with the order, and (ii) Street Surfing  will receive an executable form of the order ('grosse') and thus has no interest in an order declared enforceable before execution has been issued ('uitvoerbaar op de minuut').

Read the order (in Dutch) here.

DK - Lundbeck v. Pharma Change & Actavis

Lundbeck a/S vs. Pharma Change Aps & Actavis A/S., Danish Enforcement Court of Helsingor, 26 November 2009, Docket No. FS FO-9921/2009, with thanks to Anders Valentin, Horten

After having initially filed an application for an inter partes injunction prohibiting the wholesaler Pharma Change Aps to sell or use a pharmaceutical containing a specific API (Active Pharmaceutical Ingredient), if manufactured pursuant to a certain Lundbeck process patent, Lundbeck subsequently filed an application for an ex parte injunction. Actavis A/S intervened, claiming that an injunction would also prevent its distribution of its generic version of that same pharmaceutical.

The enforcement court first turned down the application for a temporary (i.e. until such time as an inter partes application could be heard) ex parte injunction, stating that such  a remedy lacks legal basis in the Danish Administration of Justice Act. Secondly, even though another enforcement court had ruled in favor of Lundbeck in a similar case, the court decided that that ruling did not have legal force in the present case. And thirdly, the court ruled that in order for the court to grant an ex parte injunction, a clear infringement of Lundbeck’s patent rights must have been shown. The court did not find that Lundbeck had lifted the burden of evidence sufficiently and so the application for an ex parte injunction was turned down. The decision is under appeal and dates have been set for an inter partes hearing of the application for an injunction.