EPLAW Patent Blog

SE - AstraZeneca v. Krka (esomeprazole)

AstraZeneca AB v. Krka Sverige AB, District Court of Stockholm, 4 February 2011, Docket No. T 16565-10

AstraZeneca raised a patent infringement claim against Krka's product Esomeprazol Krka and requested an injunction and damages as well as a search order for further evidence of the alleged infringement in October 2011. The circumstances are that Krka was granted a marketing authorisation for its product (manufactured in Slovenia) on 27 August 2010.  Krka had thereafter also been included in the Swedish pharmaceutical benefits scheme granted price and was intending to sell the product in Sweden. According to AstraZeneca, Krka's product was manufactured with a method in breach of AstraZeneca's EP patent in Sweden.

In pre-litigation correspondence, Krka had informed AstraZeneca that it was intending to start selling its product in Sweden within short (which also would require importing the products). However, Krka claimed that it was manufacturing its product with a method not in breach of the patent. The reason for AstraZeneca's request for a search order was to collect more evidence on the manufacturing method used by Krka so as to be able to show patent infringement. The evidence presented by AstraZeneca at that time was experiments conducted on Krka's product.

SE - Wonderland v. Hilding

Wonderland AS v. Hilding Aktiebolag, Svea Court of Appeal, 11 November 2011, Docket Nos. T 3065-10 / T 3179-10 (joint cases)

On appeal of a District Court of Stockholm decision in joint infringement and invalidity proceedings previously reported on the EPLAW Patent Blog (here) the Svea Court of Appeal has reversed the District Court's decision and declared Wonderland’s European patent valid for Sweden. Unlike the District Court, the Svea Court of Appeal was of the opinion that there was an inventive step. The key differences in the assessment by the Court of Appeal, compared to the assessment by the District Court, was that the Court of Appeal did not consider the common general knowledge of the person skilled in the art sufficient for the invention to be obvious compared to the state of the art at the priority date and neither that the combination of two publications would have led to the invention.

The District Court had also assessed whether the disputed patent had been infringed in an objective manner, based on the hypothetical assumption that the patent was valid. In this respect, the Court of Appeal confirmed the declaration by District Court in an intermediate judgment that the disputed patent had been infringed by Hilding. The remainder of the proceedings in the District Court, including the trial of claims for damages for patent infringement, was stayed awaiting a final judgment on the issue of validity and may now be resumed (subject to any appeal to the Supreme Court).

Read the judgment (in Swedish) here.

Head note: Erik Ficks

NL - Lübbers v. Relco and annular gap injectors

Lübbers Anlagen und Umwelttechnick GmbH v. Relco Wet & Dry B.V., accelerated patent proceedings before the District Court of The Hague, the Netherlands, 25 January 2012, Case No. 387236 / HA ZA 11-451 
 


On 25 January 2012, the District Court of The Hague ruled in the case brought by Lübbers against Relco. Lübbers acted as the exclusive licensee for EP 1 105 202 (relating to an annular ring injector aimed at cleaning air purification chambers), which patent is owned by Dutch patent holder and licensor Korporam B.V. Lübbers sought an injunction against Relco for patent infringement, but saw the invoked patent partially invalidated instead. Relco attacked the patent on grounds of lack of clarity / insufficiency, lack of novelty and lack of inventive step.

The Court ruled that although lack of clarity arguments under Article 84 EPC are not as such admissible in national proceedings, but that such arguments can indeed lead to invalidation on grounds of insufficiency (Article 83 EPC). Claim 4 is invalidated for that reason.

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 - Wagner v. Prevent

Wagner Group GmbH v. FX Prevent B.V., District Court The Hague, The Netherlands, 23 November 2011, Case No. 11-458
 
In its judgment of 23 November 2011, the District Court of The Hague ruled that FX Prevent infringed upon claim 1 and 10 of Wagner’s European patent EP 1 062 005. This patent relates to a fire extinguishing method by way of lowering the oxygen amount in the air of the closed room in two steps. FX Prevent argued that Wagner’s patent  is not novel and did not involve an inventive step, however failed to prove it. According to the court FX Prevent did not substantiate these argument in any way. No dated documents were submitted. Moroever, the argument that the patent did not involve any inventive step was raised for the first time during the oral hearing, which is too late. FX Prevent did not deny the infringement. The court therefore ruled that FX Prevent has to cease and desist from infringing the patent.

Read the judgment (in Dutch) here.

Headnote: Wim Maas

UK - Apimed Medical Honey v. Brightwake Limited

Apimed Medical Honey Limited v. Brightwake Limited, Court of Appeal, London, UK, 20 January 2012, Case No. [2012] EWCA Civ 5

The patent claimed a composition (commercially available as Algivon) for a wound dressing combining honey with a "gelling agent". The gelling agent increases viscosity to the extent that it results in a flexible sheet or pliable putty which can be moulded to fit the wound, providing a way to retain the honey at the wound site. All but one of the examples in the patent relied on sodium alginate as "a gelling and viscosity increasing" agent. Apimed brought an infringement claim against the manufacturer, Brightwake, of an allegedly infringing product. Brightwake’s product was a sheet formed from calcium alginate fibres and then coated with honey. Brightwake counterclaimed for revocation of the patent on the grounds of lack of novelty and obviousness. 

Held: on appeal, overturning the Patents County Court's finding of obviousness, Kitchin LJ focussed on the fact that the prior art paper taught solid honeys may be liquefied by warming and semi-solid honeys may often be liquefied by stirring. As such, the paper contemplated that the honey should be softened. This was contrary to the teaching of the patent. It also described the spreading of honey on a dressing pad or, alternatively, that it should be squeezed directly into a deep wound. There was no description of what may be said to be the heart of the invention of the Patent, namely the use of a gelling agent to increase the viscosity of the honey to such a degree that it can be formed into a flexible sheet or a pliable putty without the need for any separate dressing at all. There had been an error of principal by the first instance judge, because he had failed to identify the above differences between the prior art and the invention and whether those differences, without any knowledge of the invention, would have been obvious to the person skilled in the art.

NO - Novartis v. Actavis / Valsartan

Novartis v. Actavis, Valsartan, District Court Oslo, Norway, 10 February 2011, Case No. 10-062600TVI-OTIR/04

On 10th of February 2011 the Oslo District Court rendered its decision in a case between Novartis AG/Novartis Norge AS (hereafter Novartis) and Actavis Group PTC hf/Actavis Norway AS (hereafter Actavis) regarding Novartis’ patent NO 304023. Novartis had initiated the proceedings, requiring preliminary measures to stop Actavis’ infringement of patent NO 304 023 by producing and selling products containing the pharmaceutical ingredient valsartan.

The patent in question is a process patent and the question before the court was whether the process used by Actavis to fabricate valsartan – QSSA Route C – constituted an infringement of patent NO 304 023.The District Court assessed the question using the doctrine of equivalence.

 

NL - Canusa v. Frans Nooren and Stopaq

Canusa v. Frans Nooren and Stopaq, President of the District Court The Hague 2 March 2011, case / docket number: 382458 / KG ZA 10-1556

One of the defendant Frans Nooren is the holder of two European patents for inter alia i) the use of a fluid, non-setting preparation for protecting underground objects against corrosion, ii) a method for sealing manholes covers, and iii) a composition for the protection of a shaped article against corrosion. The other defendant Stopaq is for The Netherland the exclusive license under these patents. Between the claimant Canusa and the defendants infringement proceedings are pending in Germany with respect to the German parts of the patents. Canusa intends to enter the Dutch market with two new products of which they believe that they are not infringing. Canusa demands from the defendants that they render an opinion as to whether or not the new products of Canusa would be held to infringe upon their patents. After an extensive correspondence between the lawyers of both parties, defendant maintained its position that on the basis of the limited information provided a proper assessment of non-infringement cannot be made.

In summary proceedings Canusa demands that defendants tolerate the manufacturing and exploitation of the two new Canusa products, and furthermore files for an injunction for defendants to enforce the patents with respect to these products. These claims are dismissed by the court. According to the court Canusa’s first claim comes down to a request for a negative declaratory judgment and is in fact a anti-suit injunction. Such a judgment cannot be rendered in summary proceedings. Morover, defendants have not in any way enforced, warned or informed Canusa or its customers in The Netherland with respect to their new products. The mere fact that defendants were not willing to provide Canusa with their assessment of non-infringement, to which they were not obliged by law, is under the circumstances of this specific matter not unlawful against Canusa.

Read the judgment (in Dutch) here.

Head note: Wim Maas

ES - Goedecke & Pfizer v. Laboratorios Rubió / Gabapentin / Cassation Appeal

Goedecke Aktiengesellschaft & Pfizer, S.A. v. Laboratorios Rubió, S.A., Supreme Court, Spain, 14 June 2010, Docket No. 1801/2006.

The Supreme Court, by means of a decision dated 14 June 2010, declared the existence of infringement of the patent ES 2063219, owned by Goedecke Aktiengesellschaft (Goedecke) and licensed in Spain to Pfizer, S.A. (Pfizer) in relation to the gabapentin generic drugs intended to be marketed in Spain by Laboratorios Rubió, thus confirming the previous judgment handed down by the Court of Appeals of Barcelona on 17 May 2006.

Goedecke and Pfizer had brought legal actions against Laboratorios Rubió with occasion of the request for and obtaining by this company of an authorization to market in Spain several gabapentin generic drugs. Indeed, the plaintiffs understood that the obtaining of such authorization infringed their rights derived from the aforementioned patent, protecting a method for the stabilization of pharmaceutical compositions comprising cyclic amino acids, one of them being gabapentin. Goedecke and Pfizer had therefore claimed for the patent infringement to be declared, the cease and desist of any exploitation activities over gabapentin compositions having being obtained by implementing the patented process, as well as a compensation for damages suffered. 

 

DE - Pralinenform II

Pralinenform II, infringement proceedings, German Federal Supreme Court, 22 April 2010, Docket No. I ZR 17/05

The German Federal Supreme Court decided in a trademark case that the mere presentation of products at a German trade fair is not automatically regarded as an offer of these products or as a putting of these products on the market. It is open whether this decision may be applied in patent infringement cases.

Read the decision (in German) here.

Head note: Tilman Müller-Stoy