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:

 

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.

FR - 'Murder me twice' / Teva v. Merck Sharp & Dohme

Teva Sante, Teva Pharmaceutical Industries Ltd v. Merck Sharp & Dohme Corp, Tribunal de Grande Instance de Paris 3rd  Chamber 1st Section, 9 November 2010, with thanks to Pierre Véron, Véron & Associés for sending in the judgment, translation and summary

"This is another judgment about Merck’s patent EP 0 724 444 for the use of finasteride for the treatment of androgenic alopecia which has already been scrutinized in the UK and in Germany:

- the UK Court of Appeal (Civil Division) London, UK, 21 May 2008, Case No. [2008] EWCA Civ 444, Actavis v. Merck / Dosage Regime which held that a dosage regime was patentable and that, in the particular circumstance, it was novel and non-obvious;

- the German Bundespatentgericht on 26 June 2008, Ni 58/06 (EU), which decided that a dosage regime was patentable (but that it was lacking novelty in the specific situation).

In France this patent has already been held invalid by a former judgment of the Tribunal de Grande Instance de Paris upon Actavis’ request on 28 September 2010 (see the earlier post here) where the court held that: “A specific dosage for the treatment of an illness constitutes neither a first nor a second therapeutic application but simply an indication of the range within which this substance is efficacious so as to treat such or such an illness in light of the tests and research completed and explained in the patent.”

It is again held invalid, for the same reason, this time upon Teva’s request.

Murder me twice is normally impossible (except for Alfred Hitcock).

FR - Teisseire France S.A.S. v. La Societe Routin

Teisseire France S.A.S., le directeur de l'INPI, v. La Societe Routin S.A., Paris Court of Appeal, France, 30 March 2011, Case No. 10/10045

The Paris Court of Appeal here gives one of its first decisions regarding the admissibility of a third party appeal against the decision of the Patent Office Director to limit a French patent (further to the request of its owner). The Paris Court of Appeal ruled that such appeal was not admissible.

Routin SA sued Teisseire France SAS for patent infringement before the Paris First Instance Court.  In  counterclaim, Teisseire  requested  the revocation of the patent (lack of novelty, inventive step, insufficiency).In parallel with the infringement/revocation proceedings, Routin SA filed a request before the Patent Office  requesting  limitation of its patent, on the grounds  of article L.613-24 of the Intellectual Property Code (introduced by  law n°2008-776 of 4 August 2008), which was accepted.

Teisseire France SAS filed an appeal against the decision of the Patent Office Director to accept the limitation and claimed that the limitation was not a real limitation and did in fact result in a extension of the scope of the patent.

The Paris Court of Appeal ruled that such appeal was not admissible.

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 - Actavis v. Merck

Tribunal de grande instance de Paris, third chamber, 28 September 2010, N° RG : 07/16296, Actavis Group and Alfred E. Tiefenbacher GmbH v. Merck Sharp & Dohme Corp

The judgment handed down on 28 September 2010 by the Tribunal de grande instance, Paris in Actavis v. Merck decides that a dosage regime is not patentable because it is “plainly not” a second therapeutic application: “A specific dosage for the treatment of an illness constitutes neither a first nor a second therapeutic application but simply an indication of the range within which this substance is efficacious so as to treat such or such an illness in light of the tests and research completed and explained in the patent.”

 

FR - Institut Pasteur v. Abbott France

Institut Pasteur v. S.A.S. Abbott France, Cour d'Appel of Paris, France, 8 October 2010, Case no. 09/08135

Institut Pasteur contended that Abbott infringed several of its patents concerned with the detection of HIV in human blood and was claiming royalties in excess of €7 000 000. Abbott replied that it was operating under a licence from the US NIH (National Institute of Health) which allowed it to use certain patents belonging to Institut Pasteur. Abbott was thereby referring to agreements signed in 1987 and 1994 between Institut Pasteur and NIH to settle their dispute as to the ownership of patents about HIV detection. The Court of Appeal of Paris sided with Abbott and dismissed Institut Pasteur’s claims. Affirming a lower court judgment handed down on 21 January 2009, it held that it “results from the context that governed the elaboration of the 1994 agreement, which must be read in reference to the 1987 agreement, from the purpose which the parties declared they wanted to pursue and from the definition of the “Licensed Product”, that the gp 110 (the accused protein) falls within the scope of the licensed products”.

Read the decision (in French) here.

Read the English translation of the French decision here (with thanks to Véron & Associés).

Headnote and summary: Véron & Associés

FR - Novartis v. Johnson & Johnson

Johnson & Johnson Medical Limited, Johnson & Johnson Vision Care Inc and Ethicon v. Novartis AG, Cour d'Appel of Paris, France, 27 October 2010, Case no. 09/08135

Various decisions were handed down earlier in the worldwide litigation brought by Novartis against Johnson & Johnson about a patent for contact lenses. In a decision of Wednesday 27 October, the Cour d’Appel of Paris affirmed the 25 March 2009 judgment of the Tribunal de Grande Instance (which can be read here). In a nutshell, the Cour d’Appel rejects all Johnson & Johnson arguments of insufficiency and lack of novelty, thereby taking an opposite view to the English Court of Appeal and German Bundespatentgericht.

The patent was granted in 2001, revoked in opposition in 2003 and maintained in its original form by the Technical Board of Appeal 3.4.02 in its decision T 246/04 dated July 12, 2007. In the Netherlands, an injunction was granted against Drogisterij.net (which can be read here). In France, the Tribunal de Grande Instance in Paris gave a verdict on March 25, 2009, finding validity and infringement and ordering an injunction against J&J (read that decision here). The UK High Court held the patent to be new and inventive, the J&J lenses to be infringing, but the patent invalid on grounds of insufficiency. The Court of Jacksonville in Florida, USA, found the patent valid and J&J's lenses to be infringing. The German Bundespatentgericht judged the patent to be invalid in light of anticipation on December 14, 2009. An English Court of Appeal judgment from 29 September 2010 affirmed the High Court and revoked the patent for insufficiency (read that decision here).  

Read the decision (in French) here.

Read the English translation of the French decision here. (with thanks to Véron & Associés)

FR - Laboratoires Negma v. Biogaran and Laboratoires Medidom

Laboratoires Negma v. Biogaran and Laboratoires Medidom, Cour d’appel of Paris, 30 June 2010, Docket no. 10/07477, with thanks to Pierre Véron, Véron & Associés for sending in the judgment and the translation

In a case regarding novelty of a patent over a pharmaceutical preparation already disclosed in the prior art but claimed with a higher purity level of the active ingredient, the Court of Appeal of Paris decided that "the parameters that are not inherent to the chemical compound itself, but rather are extrinsic, shall not be taken into account in order to determine the novelty of a product, which may not acquire novelty simply because it is prepared in a purer form".
 
Consequently, even where the existence of undesirable impurities is disclosed in the patent at stake as a disadvantage of prior art, where prior art discloses the use of the chemical compound at stake as well as the compound itself without any explicit reference to the level of purity reached, an experiment evidencing the fact that by scrupulously following the examples described in the prior art a person skilled in the art using his/her general knowledge at the date of the patent could reach a higher purity level as claimed, is enough to show a lack of novelty within the meaning of Article 52 and 54 EPC.

Read the judgment (in French) here.

Read the judgment (in English) here.

Head note: Stanislas Roux-Vaillard

FR - Hexal and Sandoz v. Boehringer Ingelheim Pharma

Hexal A.G. and SAS Sandoz v. Boehringer Ingelheim Pharma GbmH & CoKG, Tribunal de Grande Instance, Paris, France, 7 May 2010, Docket No. 08/12537, with thanks to Pierre Véron, Véron & Associés for sending in the case and the translation

In a case dealing with the use of (S)(+)-2-ethoxy-4-[N-[1-(2-piperidinophenyl)-3-methyl-1-butyl]aminocarbonylmethyl]-benzoic acid as the active principle in a drug for the treatment of diabetes, the First Instance Court of Paris recently decided:

That both prior art documents produced by the claimants weren’t novelty-destroying prior art since “none of these two patents studied the specific effect of the S(+) enantiomer compared with the racemate of 2-ethoxy-4-[N-[1-(2- piperidinophenyl)-3-methyl-1-butyl]aminocarbonylmethyl]-benzoic acid.”

Regarding the inventive step, the Court points out that an effect considered as unexpected may involve an inventive step but also that “in the cases where the state of the art is taken into consideration, the person skilled in the art would arrive in an obvious manner at a result which corresponds to the terms of a claim, considering that he could expect the combination of the teachings of the documents comprised in the state of the art to bring an advantage, such a claim lacks inventive step, independently from the fact that a possibly unexpected additional effect is obtained.”

Whereas the Court ruled that claim 1 shall not be invalidated for lack of novelty, it nevertheless held claims 2 and 3 invalid for lack of novelty.

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

Head note: Gwendal Barbaut