EPLAW Patent Blog

DE - Mölnlycke / comment: ruling gives more effect to torpedo actions

German Federal Supreme Court ruling on Mölnlycke case gives more effect to torpedo actions, by Dietrich Kamlah and Christof Höhne, Taylor Wessing

"In a recently published decision (ref. no. X ZR 70/12 – Wundverband), the German Federal Supreme Court ruled that an exclusive licensee cannot bring patent infringement proceedings, if the patentee himself has already brought patent infringement proceedings against the same defendant and the license was granted only after proceedings by the patentee had been initiated. This decision might limit the options of a patentee to sue an infringer who has already filed a “torpedo” action under the same patent."

Read the entire contribution here.

UK - Mölnlycke Health Care v BSN Medical

Mölnlycke Health Care AB and Mölnlycke Health Care Limited v BSN Medical Limited and BSN Medical GMBH, 9 November 2012, Case No. HC09C03755, Neutral Citation Number: [2012] EWHC 3157

Mölnlycke Health Care alleged that BSN Medical’s “Cutimed Siltec” range of layered wound dressings infringed its European Patent (UK) No 0855921, which claimed a wound dressing comprising a layer of “holey” form coated with a layer of skin-adhering hydrophobic gel (e.g. silicone gel) wherein the walls of the holes in the foam were coated with gel at the ends which were proximal to the wearer’s skin.  BSN claimed that the patent was invalid for want of novelty, inventive step and sufficiency.

Mr Justice Floyd held that the patent was valid, but not infringed by the BSN products.

In construing the patent, Mr Justice Floyd confirmed that in the context of a product claim, the court was concerned with the end result and not with the means by which that result was achieved. Thus the requirement in claim 1 that the foam be “coated” with hydrophobic gel would be understood by the skilled person to mean that the foam and gel must be in intimate contact with one another; investigation into how that contact was achieved was irrelevant for the purposes of the claim.

The assessment of infringement turned on: (i) whether the silicone layer of the BSN products constituted a “gel”; and (ii) whether the silicone in the BSN product coated the walls of the holes in the foam.

UK - Mölnlycke v. Brightwake

Mölnlycke Health Care AB v. Brightwake Limited (trading as Advancis Medical), High Court of Justice, Chancery Division, Patents Court, London, UK, 25 February 2011, [2011] EWHC 376 (Pat)

The Patents Court held that the product claims of Molnlycke’s patent EP (UK) 0 633 757 relating to wound dressings were invalid and not infringed.

Mölnlycke commenced infringement proceedings in respect of Brightwake’s Episil and Episil Absorbent products. Brightwake counterclaimed that the product claims of the patent were invalid for lack of novelty and for lack of inventive step.

His Honour Judge Birss QC, sitting as a judge of the Patents Court, held that the Episil and Episil Absorbent products did not infringe the patent.

HHJ Birss QC held that claim 6 of the patent was novel in respect of the Brassington prior art but that the product claims were obvious over Brassington. The Judge found that claim 6 was not obvious over the Fabo prior art.

Read the judgment (in English) here.

Head note: Robert Fitt

UK - Mölnlycke v. BSN Medical

Mölnlycke Health Care AB (MAB), Mölnlycke Health care Limited (MUK) v. BSN Medical Limited and BSN Medical GmbH (Cutimed Siltec wound dressings), High Court of Justice, Chancery Division, Patents Court, London, UK, 17 December 2009, Case No. HC09C037755.

BSN contends that infringement proceedings brought by Mölnlycke be stayed (based on Article 27 of Regulation No. 44/2001) until jurisdiction of the Stockholm District Court in co-pending declaratory proceedings related to the patent is established. MAB applies for an interim injunction until judgment or further order.

Justice Flyd states that the purpose of Article 27 (to prevent parallel proceedings in different member states) requires a flexible approach to the meaning of 'same parties'. It would be wrong to treat MUK as the same party when the effect may be to deprive it of the benefit of its exclusive license. Justice Floyd refuses the stay on the basis that the parties are not identical. It is therefore not necessary to consider whether the causes of action are identical. The injunction applied for was refused as MAB and MUK have not behaved like parties who need urgent protection against BSN's competition. 

Read the judgment (in English) here.