EPLAW Patent Blog

BE - Supreme court upholds traditional Belgian prima facie validity test in PI proceedings

Novartis v. Mylan, Supreme Court (“Hof van Cassatie/Court de Cassation”), Belgium, 5 January 2012, Docket number C.11.0101.N,

The Belgian Supreme Court has confirmed an earlier decision of the Brussels court of appeal whereby Novartis saw its claim for a preliminary injunction against Mylan’s intended commercialisation of a generic sustained release formulation of fluvastatin granted. In doing so, the Supreme Court 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. This prima facie validity is not affected by a decision of the Opposition Division of the EPO against which an appeal has been lodged before the EPO Technical Board of Appeal, even if the patent concerned was revoked in its entirety by the Opposition Division. According to the Court, this directly ensues from the suspensive effect of such an appeal pursuant to Article 106(1) EPC.

Read the judgment (in Dutch) here.

Head note: Philippe de Jong

SE - Ferring v. Medac

Ferring International Center S.A v. Medac Gesellschaft für klinische Spezialpräparate G.m.b.H, Gebro Pharma G.m.b.H. v. Ferring International Center S.A, Medac Gesellschaft für klinische Spezialpräparate G.m.b.H v. Ferring International Center S.A, District Court of Stockholm, 31 March 2011, Docket No. T T 26687-06, T 1370-07 and T 15455-07 (joint cases)

Ferring International Center S.A was the holder of a Swedish patent granted in October 2006 for a pharmaceutical in tablet form (with desmopressin as active substance) and lodged a patent infringement claim against Medac Gesellschaft für klinische Spezialpräparate G.m.b.H for its marketing of the pharmaceutical Nocutil (manufactured by Gebro Pharma G.m.b.H.) in November 2006. In defence to the patent infringement claim, each of Medac Gesellschaft für klinische Spezialpräparate G.m.b.H and Gebro Pharma G.m.b.H. intitiated separate proceedings claiming that the patent was invalid in the first half of 2007. The District Court of Stockholm decided to hear the cases jointly.

The patent was declared invalid due to lack of inventive step. Also lack of novelty had been invoked, referring to tablets having been made publically available before the patent's priority date by delivery from Ferring to Sandoz. However, the Court concluded that Sandoz had undertaken not to transfer the information and that the existence of such confidentiality undertaking meant that the tablets could not be considered to have been made publically available. For the Court's assessment of inventive step, it concluded that the objective problem could be solved by further development of Ferring's previous products based on the common general knowledge in the art (i.e. the Handbook of Pharmaceutical Excipients, 3d ed., 2000 by Kibbe).

Furthermore, the Court declared in the infringement case (T 26687-06), in an intermediate judgment, that the disputed patent had been infringed by Medac (a defence of prior use was rejected). The assessment of whether the disputed patent had been infringed was done in an objective manner only, based on the hypothetical assumption that the patent was valid (either as granted or as amended). The remainder of the proceedings, including the trial of claims damages, were stayed awaiting a final judgment with regard to the validity of the patent.

Read the judgment (in Swedish) here.

Head note: Erik Ficks

SE - Välinge v. Pergo

Välinge Innovation AB v. Pergo (Europe) Aktiebolag, District Court of Stockholm, 24 January 2012, Docket No. T 19793-09

The Swedish developer of flooring technology, Välinge Innovation AB, raised an invalidity claim against a Swedish patent granted in 2005 for a locking system for floor panels held by Pergo (Europe) Aktiebolag. The invalidity claim was based on lack of both novelty and inventive step. Pergo denied the invalidity claim and held that the patent at least should be upheld in respect of the first patent claim as amended.

The District Court concluded that the invention was new, but declared it invalid due to lack of inventive step (also as amended). Compared to the matter cited in the state of the art, the alleged invention was considered merely a product of routine work by the person skilled in the art. Noticeable is the Court's several references to case law from the EPO and the EPO's Guidelines in its assessment of the disputed patent. This is another confirmation of the clear trend of Swedish Courts closely adhering to the practice of the EPO in its decision-making.

Read the judgment (in Swedish) here.

Head note: Erik Ficks

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 - Taste of Nature v. Cresco

Taste of Nature Holding B.V. v. Cresco Produktie Maatschappij B.V. et al, District Court The Hague, The Netherlands, 31 January 2012, Case No. 11-1414, with thanks to Thomas Berendsen and Maarten Rijks, Banning, for sending in a translation of the judgment

Both Taste of Nature and Cresco operate in the field of the production and sale of sprouts and seedlings which are edible young vegetable plants. Taste of Nature has developed a seedling of a radish being characterized by a high level of anthocyanin (antioxidant), protected by its European patent EP 1.290.938 (“EP ‘938”), as validated in the Netherlands. The patent inter alia relates to methods for the production of the seedling.

Early December 2011, Taste of Nature initiated Summary Proceedings against Cresco, because of alleged infringement of its patent. The Judge rejected Taste of Nature’s claims because it considered EP ‘938 invalid in view the exclusion of patentability under article 53(b) EPC. In the reasons the Summary Proceedings Judge stated that “it is plausible that under Article 53, opening lines and (b), of the EPC, not only an essentially biological method is unpatentable, such as the “classical breeding” in this case, but also a product directly obtained by using that method, because a method claim also protects the product directly obtained using that method (see Article 64(2) of the EPC).”

In order to further underpin its opinion, the Judge argues that “[i]f it were to be ruled that a product-by-process claim is admissible for the directly obtained product of an unpatentable essentially biological method, that would render the exclusion in Article 53, opening lines and (b), of the EPC as interpreted by the EBA in G1/08 pointless, because in that case the same situation would be involved as if the EBA had considered the process claims admissible, which is not the case.”

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

Head note: András Kupecz

NL - Lundbeck v. Tiefenbacher / Escitalopram Appeal

Joined cases of H. Lundbeck A/S v. Alfred E. Tiefenbacher GmbH and H. Lundbeck A/S v. Centrafarm Services B.V. and H. Lundbeck A/S v. Ratiopharm GmbH, Court of Appeal The Hague, The Netherlands, 24 January 2012, Case Nos 312468 / HA ZA 08-1827, 314574/HA ZA 08-2142 and 314783/HA ZA 08-2172, with thanks to Marleen van den Horst en Jaap Bremer, BarentsKrans, for sending in the judgment and a summary in English

The Court of Appeal in the Hague has decided that Lundbeck’s patent for escitalopram, which patent had been invalidated in its entirety by the District Court in first instance, is partially invalid. The product claims for the active substance escitalopram were nullified for lack of inventive step, whilst the method claim describing a specific procedure for the synthesis of escitalopram and the claim relating to an intermediate product were considered valid. The SPC-specific nullity arguments were dismissed.

Read the entire summary in English here.

Read the judgment (in Dutch) here.  

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.

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

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.

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.