EPLAW Patent Blog

FR - Vetrotech Saint Gobain International v. Interver / Cour de cassation

Vetrotech Saint Gobain International AG v. Interver SA, French Cour de cassation, 12 February 2013, Case number F 11-26.361, with thanks to Pierre Véron and Florence Jacquand, Véron & Associés, for providing the case including asummary and translation in English

The French saisie-contrefaçon may not be used as a pretext for performing a fishing expedition.

In this country, the saisie-contrefaçon is an exceptional evidentiary measure allowing a patent owner, before initiating main proceedings, to enter his competitor’s premises without the latter’s consent in order to gather evidence of the alleged infringement (see here see also a 15-minute film providing a brief introduction to the practical aspects of the French saisie-contrefaçon).

However, it does not confer unlimited powers on the bailiff performing the measure.

French courts are extremely careful to ensure that the saisie-contrefaçon is only used as an evidentiary measure and sanction all abuses. The decision handed down by the French Cour de cassation on 12 February 2013 clearly demonstrates that the patent owner runs the risk of being ordered to pay significant compensation in case of an abuse.

The claimant, Vetrotech, the holder of several patents relating in particular to the manufacturing of fire resistant safety glass, alleged that its competitor, Interver, had launched a product obtained through a similar process and requested, on the basis of four patents, that a saisie-contrefaçon be performed on Interver’s premises. According to the order allowing the saisie-contrefaçon, the bailiff was entitled to perform “all operations likely to establish the existence, origin and extent of the alleged infringement, by asking relevant questions if necessary (…) but with no questioning other than that required to complete his investigations.”

Having obtained this authorisation, Vetrotech thought it was allowed to look for confidential information that has no direct link with the alleged infringement; the saisie was carried out by two bailiffs assisted by two patent attorneys and an expert; the bailiff asked 24 questions to Interver concerning the composition of the product, its manufacturing process, the manufacturing period, and the extent of the marketing.

FR - Sanofi v. Novartis / Cour d’appel de Paris

Sanofi v. Novartis, Cour d’appel de Paris, 11 December 2012, Case number  11/20113, with thanks to Pierre Véron, Véron & Associés, for sending in the judgment, a summary and translation in English

The French cour d’appel de Paris holds that a preliminary injunction cannot be ordered ex parte unless specific circumstances justify not to hear the defendant in inter partes proceedings.

This is a further case in the valsartan saga (see www.eplawpatentblog.com/eplaw/valsartan)

Novartis AG, holder of European patent EP 0 443 983 which expired on 12 February 2011, was granted a French supplementary protection certificate (SPC) for valsartan on 17 September 1999; this SPC No. 97C0050 was in turn the subject of a paediatric extension, which expired on 13 November 2011.Novartis Pharma holds a licence for this SPC and its paediatric extension; it holds several marketing authorisations for proprietary drugs containing valsartan marketed under the name Tareg or Cotareg.

On the basis of these rights, Novartis had obtained a preliminary injunction against Actavis on 28 January 2011; this preliminary injunction was lifted by the cour d’appel de Paris on 16 September 2011 (judgments of first instance and appeal available on www.frenchpatentcaselaw.info); the judgment of the cour d’appel was eventually quashed by the French Cour de cassation on 15 January 2013, see our earlier post here.

In October 2011, as the expiry date of the paediatric extension (13 November 2011) approached, Novartis was informed that Sanofi was about to launch a generic.

FR - Alkermes Pharma Ireland v. Etypharm

Alkermes Pharma Ireland Limited (successor to Elan Pharma International Limited) v. Etypharm, Tribunal de Grande Instance, Paris, France, 21 December 2012, Case No.10/05718, With thanks to Marina Cousté, Reed Smith LLP, for sending in the judgment and a summary and translation in English

The Tribunal de grande instance de Paris rendered a  very interesting  decision on December  21, 2012, admitting the  validity of a disclaimer restoring the novelty of the claim 9 of the European Patent n° 0 644 755 owned by Alkermes. This patent,  entitled  "Nanoparticles of surface-modified nonsteroidal anti-inflammatory agents",  concerns  pharmaceutical compositions containing
nanoparticles of surface-modified crystalline nonsteroidal anti-inflammatory agents (NSAID) exercising  a reduced gastric irritation following oral administration and/or having a faster action.

Claim 9 is written as follows:
“9. Use of particles consisting essentially of a drug substance with an adsorbed surface modifier on the surface, in an amount sufficient to maintain an average particle size less than 400 nm or a pharmaceutical composition of the latter for the preparation of a drug in order to accelerate the onset of action after administration to a mammal,  provided that the drug substance is not naproxen or indomethacin.”

Ethypharm  raised  inter alia  the  invalidity of claim 9 of the opposed patent both for lack of novelty as inventive step, in view of the prior art constituted by application U.S. 07 647 105 and by European Patent n° 0 499 299. Prior art  opposed by Ethypharm  constituted by  application US 105 was rejected  on the ground that none of its claims deals with the onset of action or irritability  and as a
consequence was a speculative mention, “a mere possibility that is not justified by any example, test or result” Regarding the prior art constituted by EP 299, the judge noted that it was  published  2 months after the  priority date of  patent  owned  by Alkermes and so  could not  be enforceable under inventive activity but  remained  possibly  enforceable  under novelty according to article 54 of  EPC. Alkermes  argued here that introduced  at the end of claim 9 of the challenged patent, the disclaimer  is  used as authorized by article 123 EPC,  i.e.  in order to restore novelty in relation to prior art resulting from a document filed at an earlier date but that has not been published.

FR - Novartis v. Actavis - Cour de cassation

Novartis v. Actavis, French Cour de cassation, Paris, France, 15 January 2013, Case number  A 11-26.632, with thanks to Pierre Véron and Nicolas Bouche, Véron & Associés, for providing the judgment, a translation in English and a summary

The French Cour de cassation follows the Court of Justice of the European Union’s ruling of 9 February 2012 in the parallel UK case and decides that the proprietor of an SPC for product A may prevent third parties from marketing a drug combining A + B.

Novartis was the proprietor of a basic patent (expired on 12 February 2011) covering valsartan and of an SPC for the product valsartan, a drug against hypertension.

Actavis marketed in France a drug containing valsartan and another active ingredient, HCTZ, a diuretic.

Novartis sought a preliminary injunction against Actavis, which was granted by the tribunal de grande instance on 28 January 2011, but the cour d’appel de Paris reversed it on 16 September 2011 on the grounds that “although the medicinal product valsartan + HCTZ contains the active ingredient valsartan, it is not the "product" valsartan within the meaning of the Regulation but another "product" comprising a combination of active ingredients”.

Novartis brought the case before the Cour de cassation, the highest French court for civil matters.

The legal question (the interpretation of Articles 4 and 5 of Regulation (EC) No 469/2009 of 6 May 2009 concerning the supplementary protection certificate for medicinal products) was whether the SPC covering the product valsartan was infringed.

In other words, whether the owner of an SPC for product A can prevent the marketing of an A + B product where B is also an active ingredient.

FR - Sanofi v. Teva

Sanofi, Sanofi Bristol Myers Squibb and Sanofi Aventis France v. Teva Santé, Tribunal de Grande Instance, Paris, France, 3 October 2012, Case No. 12/57056, with thanks to Pierre Véron and Isabelle Romet, Véron & Associés, for sending in the decision, including a translation and summary in English

On 3 October 2012 the presiding judge of the tribunal de grande instance de Paris issued a preliminary injunction against Teva Santé.

This is a French development of the European litigation concerning Sanofi’s combination SPC irbesartan/HCTZ covering its flagship drug for the treatment of hypertension marketed under the brand CoAprovel which gave rise, inter alia, to the following decisions:

UK - Actavis v. Sanofi, (CJEU referral, which may be read here)

NL - Sanofi / Pharmachemie & Teva – Irbetasan & HCTZ  (preliminary injunction against Pharmachemie and Teva, which may be read here)

DE – Sanofi / Actavis Landgericht Düsseldorf 15 August 2012 (preliminary injunction against Actavis, which may be read here)

The order handed down on 3 October 2012 by the presiding judge of the tribunal de grande instance de Paris enjoins Teva Santé from marketing in France a generic irbesartan/hydrochlorothiazide (HCTZ).

Sanofi’s French SPC No. 99 C0001 on the combination of the two active ingredients irbesartan, an angiotensin II receptor antagonist, and hydrochlorothiazide, a diuretic, is based on claim 20 of European patent No. 0 454 511 protecting the combination of irbesartan and “a diuretic”.

FR - Biogaran v. Negma: Compensation of damages caused by an interim injunction on a patent later found to be invalid

Biogaran v. Laboratoire Medidom, Laboratoires Negma, Tribunal de grande instance (3rd chamber, 3rd division), Paris, 27 January 2012, Case No. 09/17355, with thanks to Sabine Age and Marta Mendes Moreira, Veron & Associes, for sending in the judgment, summary and translation in English

A patentee who has obtained an interim injunction from a court to restrain infringement of a patent which is subsequently held invalid must compensate the defendant for losses sustained as a result of being prevented by the injunction from selling allegedly infringing goods.

The judgment handed down on 27 January 2012 by the tribunal de grande instance of Paris is the first reported decision of a French court on the consequences of the enforcement of a preliminary injunction against an alleged infringer of a patent which is later held invalid.

 

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.