EPLAW Patent Blog

NO - Actavis v. Novartic / Valsartan

Actavis Group PTC hf and Actavis  Norway AS v. Novartis Norge AS and Novartis AG, Borgarting Court of Appeal, Norway, 23 October 2012, Case no. 11-062214ASD-BORG-02, with thanks to Inga Kaasen and Thomas Hagen, Advokatfirmaet Grette, for sending in the judgment and a head note

On 23 October 2012 the Borgarting Court of Appeal rendered its judgment in the case between Actavis Group PTC hf and Actavis Norway AS, hereafter Actavis, and Novartis Norge AS and  Novartis AG, hereafter Novartis, regarding Novartis’ patent NO 304023. The patent protects an analogical process for the production of valsartan. Valsartan is an active ingredient in medicinal products used for the treatment of cardiovascular diseases. Novartis’ patent NO 304023 expired in February 2011, but SPC/NO 1998024 prolonged the protection until 13 May 2011.

The Court of Appeal had to evaluate whether or not QSSA’s “Route C”, used by Actavis, was an obvious modification of Novartis’ patent protected process. All the features of the patent could not be found in Actavis’ process. However, the Borgarting Court of Appeal’s majority found that Actavis’ process constituted a patent infringement based on the doctrine of equivalence, as it considered the process as a nearby modification of the patent protected process. The minority found that Actavis’ QSSA process was a different process than the patented process.

The Court of Appeal concluded that Actavis had committed patent infringement. When considering Novartis’ claim for damages, the court adjusted the claim reasonably from NOK 17,000,000 to NOK 11,400,000 [approximately EUR 1,553,063; editor]. In accordance to this, Actavis had to pay NOK 11,400,000 in damages to Novartis. Legal fees were not awarded.

Read the judgment (in Norwegian) here.

NO - Torbjørn Kvassheim v. research foundation Stiftelsen SINTEF

Torbjørn Kvassheim v. research foundation Stiftelsen SINTEF, contributory infringement/research exception, Norwegian Supreme Court, Oslo, 22 December 2009, Docket. No. HR-2009-2402-A, with thanks to Amund Brede Svendsen, Grette

The Supreme Court majority emphasized that the experimental exception and the right to strive for new knowledge does not mean that a research institution can exploit such knowledge commercially by selling the product based on the new knowledge without incurring liability for any patent infringements. Delivering means for the use of the inventions may constitute a contributory patent infringement, even if the means include or are based on new knowledge acquired by research activities that do not infringe the patent.

SE - Seeking Preliminary Injunction for Pharmaceutical Patent Infringement in Sweden

Seeking Preliminary Injunction for Pharmaceutical Patent Infringement in Sweden - A Comparative Law Analysis of Pharmaceutical Patent Protection and Injunction Proceedings in the Nordic Countries

By Erik Ficks, Roschier

"2009 has brought about significant changes to the Swedish pharmaceutical market as a consequence of the dismantling of the state pharmacy monopoly. As of 1 July 2009, parties other than the Swedish state are permitted to establish pharmacies. This increased activity creates an increased need for patent holders to safeguard their rights, primarily by preliminary injunctions. Coincidentally, due to the delayed implementation of the Enforcement Directive (also known as IPRED), it became possible for Swedish courts to issue preliminary injunctions against imminent threats of patent infringement as of 1 April 2009.

"In order to present how the Swedish courts may apply this new provision a comparison is made with cases where such preliminary injunctions have been granted in Denmark, Norway and Finland."

Read the complete contribution here.