EPLAW Patent Blog

IT - HL Display AB vs. Synco spa

Milan court 20 July 2010 - 20 July 2010 and Milan court 23 September 2010 - 24 November 2010, HL Display AB vs. Synco spa
 
Both decisions related to a request for preliminary injunction based on two European patents, relating to mounting systems for label holders and to a profile moulding for shop shelves. One of defendant's arguments was that the sales of the products in dispute had been known to plaintiff for several years, so that there was really no urgency justifying a preliminary injunction. Plaintiff had replied that an opposition was previously pending against one of the patents, so that caution had suggested to await the end of the opposition procedure. Defendant counterreplied that the Italian law admits precautionary proceedings even when a patent application is still pending, so that nothing would have barred plaintiff from taking action long before. If plaintiff had decided to wait due to the uncertainty of the opposition procedure, that evidently meant that the problem was not sufficiently serious or urgent.
 

HU - Court maintained preliminary injunction after limitation of Patent

Budapest Metropolitan Court, date of the decision: January 3, 2011, delivery date of the decision: January 21, 2011.

History of the case is that in November 2009 the Metropolitan Court banned the Respondent by means of preliminary injunction from distributing its pharmaceutical product upon the request of the Patentee. The patent in suit covers a pharmaceutical composition consisting of a given active ingredient and certain additives defined in the claim. The product of the defendant contains the said active ingredient and among its additives ethanol, which in the Metropolitan Court’s assessment fulfilled the requirements concerning the additives described in the patent. The Metropolitan Court placed the preliminary injunction even though there were pending nullity requests against the patent, with respect to the specialty of the Hungarian patent litigation system, namely the strict separation of infringement and validity questions (bifurcation). The Patentee was obliged to HUF 150 000 000 as security.

DE - Mannheim Regional Court decision I

Mannheim Regional Court, decision of 29/10/2010, docket no.: 7 O 214/10

- An interim injunction can only be granted in patent disputes if the question of infringement can be readily judged without doubt and if there are no serious doubts as to the patentability of the patent in suit. Even if these requirements are satisfied the respective interests of the parties must be appraised and weighed up against each other.

- The fact that a product which makes use of all features of at least one claim of the patent in suit is exhibited at a trade fair and that product catalogues containing order numbers for such product are also on display at the trade fair stand does not per se constitutes an offer pursuant to § 9 no. 1 Patent Act.

Read the decision (in German) here.

Headnote: Jan Dombrowski

BE - Novartis v. Mylan / Fluvastatin

Novartis v. Mylan, Brussels court of appeal, Belgium, 26 October 2010, Docket number A.R. 2010/KR/175, with thanks to Philippe de Jong, Altius, for sending in the case and translation

The Brussels court of appeal has reversed a decision from the Brussels commercial court which had rejected Novartis’ claim for a preliminary injunction against Mylan’s intended commercialisation of a generic sustained release formulation of fluvastatin. In doing so, the Brussels court of appeal upheld the established approach applied by the Belgian courts that a granted (European) patent is presumed to be valid for the purpose of obtaining an interim injunction. According to the court, upon a proprer application of Article 106(1) EPC, it is irrelevant that the EPO Opposition Division revoked the patent, even in its entirety, since the appeal against that decision before the EPO Technical Board of Appeal has suspensive effect.

Read the decision (in Dutch) here.

Read the decision (in English) here.

Head note: Philippe de Jong


HU - Preliminary injunction is not available if the scope of protection defined in the main claim is different from the one that can be derived based on the description

Hungary, Mertropolitan Court (first instance decision), 29 October 2010

The Metropolitan Court ruled in a first instance decision that a preliminary injunction is not available if the scope of protection defined in the main claim is different from the one that can be derived based on the description.

The patentee is the owner of a pharmaceutical patent which extends to an injectable pharmaceutical product having a taxane derivative as ingredient, a certain surfactant defined by its quality and an additive defined by its molecular weight, the latter serving the prevention of gelling or breaking the gelled phase when the patented solution is injected into perfusion.

In order to assess the probability of infringement in a preliminary injunction proceeding the court examined the scope of the protection defined by the main claim and established that in the product of the defendant, all components listed in the main claim – a taxane derivative as active ingredient, a surfactant and an additive with limited molecular weight – are present. Therefore, the court concluded that the product of the defendant falls into the scope of the patent.

NL - Merck Sharp & Dohme v. Sandoz

Merck Sharp & Dohme Corp. v. Sandoz B.V., the preliminary injunction judge of the District Court of The Hague, The Netherlands, 4 June 2010, Case No. 363158 / KG ZA 10-427

Merck claimed that Sandoz infringes its EP 752 and SPC 990041 for ‘ophthalmic compositions comprising combinations of a carbonic anhydrase inhibitor and a beta-adrenergic antagonist’ by marketing a dorzolamide/timolol-product (anti-glaucoma eye drops). The preliminary injunction judge rules that the fact that EP 752 (in amended form) was invalidated in parallel UK proceedings is in and of itself not sufficient for the judge in preliminary injunction proceedings to rule that there is a non-negligible chance that the (Dutch part of) the patent will be invalidated in proceedings on the merits. The Dutch judge must make up its own mind. However, the view of a respected fellow patent-judge in parallel proceedings on the merits will be given considerable weight. Merck also failed to explain or criticize the English verdict in any meaningful way, according to the preliminary injunction judge.

A point of interest was the discussion on whether or not the so-called Nardin-abstract was indeed to be considered prior art. Merck initially argued that the abstract was from a later date than the priority date (17 April 1991), but Sandoz obtained inter alia a statement from the British Library to the effect that the abstract had been received by the Library on April 11, 1991 and had been cataloged on April 16, 1991 ‘and would have been available for public use from that date’. The preliminary injunction judge refers to the Enlarged Board of Appeal T314/99 decision, in which it was held that a document “by its mere arrival in the archive [of a library; ed.] publicly available, since that did not mean it was as of that point in time cataloged or otherwise prepared for the public to acquire knowledge of it’. Since the Nardin-abstract had been cataloged the day before the priority date, the preliminary injunction judge therefore judged it to be prior art.

After reviewing the prior art (and especially the Nardin-abstract) the preliminary injunction judge came to the conclusion that there is a non-negligible chance that the Dutch part of the patent will be invalidated in proceedings on the merits. Therefore, the requested injunction was denied.

Read the judgment (in Dutch) here.

Head note: Maurits Westerik

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 - Agfa Graphics v. Chendu Xingraphics and A. Ten Cate Offsetprodukten

AGFA Graphics N.V. v. Chendu Xingraphics Co. Ltd and A. Ten Cate Offsetprodukten B.V., District Court The Hague, 11 May 2010, Case No. 361875 / KG ZA 10-359

Agfa holds a patent for a method for making positive photosensitive lithographic printing plate and claims that Xingraphics and Atece (indirectly) infringe upon that patent. In an earlier first instance decision on the merits between the same parties, the District Court of the Hague ruled that Agfa failed to prove infringement and refused the requested relief. Agfa appealed the decision, subsequently came up with new evidence and also started preliminary injunction proceedings against Xingraphics and Atece based on said new evidence.

In this decision in the preliminary injunction proceedings that followed, the President of the Court of the Hague - in reference to a 2000 Supreme Court decision (LJN AA5870) -  holds that he in principle is compelled to follow the earlier decision on the merits. The President furthermore affirmed the Supreme Court decision in stating that this could be different, if the earlier decision on the merits would contain an obvious error and if the case would be so urgent that the outcome of the appeal could not be awaited. However, according to the President this was not the case. Moreover, in the opinion of the President, no circumstances appeared after the decision on the merits that would have prompted the Court in first instance to render a different decision if it had been aware of these circumstances. For all these reasons, the relief was rejected.

Read the decision (in Dutch) here.

 

DK - H. Lundbeck A/S v. Pharma Change ApS - Actavis A/S entered as independent party

H. Lundbeck A/S v. Pharma Change ApS, bailiff's court (enforcement court) Elsinore, Denmark, 16 April 2010, Docket no. 9921/2009

A Danish bailiff's court granted Lundbeck's application for an interim injunction against the wholesaler Pharma Change ApS, selling and distributing a generic escitalopram product manufactured by Dr. Reddy's Laboratories in India.

Having obtained in the summer of 2009 an interlocutory injunction against the largest Danish wholesaler, Nomeco A/S, H. Lundbeck A/S filed an application for an interlocutory injunction against the new and independent wholesaler, Pharma Change ApS, which carried as its only prescription pharmaceutical in its portfolio a generic escitalopram pharmaceutical.

NL - Mundipharma Pharmaceuticals v. Sandoz

Mundipharma Pharmaceuticals B.V. v. Sandoz B.V. District Court The Hague, The Netherlands, 7 April 2010, Docket No. 340373 / 09-2029, including the English translation, both with thanks to Willem Hoyng, Howrey

*Now including the English translation*

In today's judgment the District Court of The Hague ruled that Mundipharma's EP 730 as granted relating to the controlled release oxycodone formulation, OxyContin®, is valid and infringed by Sandoz' 10 and 20 mg dosages. The District Court grants a provisional injunction against Sandoz while awaiting the outcome of the appeal in the pending opposition proceedings.

The judgment deals extensively with the invalidity arguments as put forward by Sandoz (added matter; (undisclosed) disclaimer; insufficient disclosure; lack of novelty; lack of inventive step).

A comment on the decision will follow shortly.

Read the judgment (in Dutch) here.
Read the judgment (in English) here.