AstraZeneca AB and Another v KRKA dd Novo Mesto and Another, England and Wales Court of Appeal (Longmore, Kitchin and Floyd LJJ), London, UK, 21 May 2015, Neutral Citation Number:  EWCA Civ 484
In order to obtain a preliminary injunction against Krka, AstraZeneca had given a cross-undertaking in damages. When the injunction was lifted by consent, damages became due to Krka. In this case, the Court of Appeal of England and Wales affirmed the judgment of Sales J (as he then was) in determining the quantum of those damages.
Broadly the Court of Appeal applied the principles set out in prior case law for determining quantum of liability. The application of the legal standards in this case was not without difficulty because of the very complicated factual circumstances at issue. This judgment has provided guidance for how the amount of loss should be calculated when the assessment is necessarily speculative, and about highly complex features of a market.
Synthon v Teva, London, UK, 21 May 2015,  EWCH 1395 (Pat) Birss J
In his judgment of 21 May 2015, Birss J upheld the validity a number of claims of EP’528 and EP’924, both owned by Teva and relating to glatiramer acetate (“GA”). This was so notwithstanding that the Dutch designations of the same patents had previously been revoked (albeit with some differences in the evidence taken into account). Three of the claims of EP’924 were, however, found to be invalid for added matter.
GA is a mixture of synthetic polypeptides made of four amino acids, a low molecular weight fraction of which is sold by Teva (brand name Copaxone) for the treatment of relapsing remitting multiple sclerosis.
EP’528 and EP’924, both being divisionals and differing of note only in relation to their claims, relate to improvements in the process for making GA, namely those resulting in low levels of free bromine and metal ion impurities. The claims in issue were mostly process claims for making GA or its intermediate (TFA-GA) and claims to the GA product itself (claims 22-26 of EP’924).
Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) (direct link here)
(A version of this booklet incorporating the full transcript of the Public Oral Hearing on the 17th draft of the Rules of Procedure of the Unified Patent Court held in Trier on 26 November 2014 will be available shortly.)
- The two judgments handed down on 5 May 2015 by the CJEU dismissing Spain’s actions against the EU regulations on the unitary patent protection:
Case C146/13 concerning Regulation (EU) No 1257/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection DE, EN, FR
Case C147/13 concerning Regulation (EU) No 1260/2012 of 17 December 2012 implementing enhanced cooperation in the area of the creation of unitary patent protection with regard to the applicable translation arrangements DE, EN, FR
Consultation Document on the Rules on Court fees and recoverable costs launched on 8 May 2015 by the Preparatory Committee Unified Patent Court (direct link here).
From the EPLAW President's letter dated 4 June, 2015:
"EPLAW is pleased to see that the Administrative Committee (AC) and the EPO are actively engaged in furthering the independence of the BoA.
"We note that in the meantime the Council of Bars and Law Societies of Europe (CCBE) in its letter to Mr. Jesper Kongstad of the AC of 15 May 2015 (copy enclosed) has provided various detailed comments to the Proposal. EPLAW is in full agreement with these comments which, given their general and fundamental nature, lend themselves to be addressed to the EPO as well.
"Two aspects of the Proposal cause most concern to EPLAW."
Stretchline Intellectual Properties Ltd vs H & M Hennes & Mauritz UK Ltd, Court of Appeal, UK, 22 May 2015
This decision was a decision of the Court of Appeal, upholding an earlier decision by Mr Justice Sales regarding the extent to which a settlement agreement compromising patent proceedings between two parties pre-empted the parties from raising invalidity arguments in subsequent proceedings.
In July 2009, Stretchline initiated proceedings against H & M alleging that various brassieres H & M was selling through its stores infringed Strechline’s patent GB 2,309,038 and a corresponding US patent which related to providing a penetration barrier which prevented under wires in bras from penetrating the tubes which encase them. A mediation took place in May 2011 and the parties entered into a global settlement agreement settling the dispute between the parties with H & M agreeing to stop selling the disputed brassieres and agreeing to drop their allegations that the patents were invalid.
The New European Patent, by Alfredo Ilardi, Hart Publishing, May 2015
Now available with a discount for EPLAW Patent Blog readers (read below the line for the details)
"On 17 December 2012, following a complex negotiation which lasted 12 years, the European Parliament adopted Regulations (EU) 1257/2012 and 1260/2012 and the text of the Agreement on a Unified Patent Court (UPC Agreement). These instruments institute the ‘European patent with unitary effect’, the first unified system for the protection of inventions within the European Union. The two Regulations will be applicable after the entry into force of the UPC Agreement, which was signed on 19 February 2013 by 24 Member States of the European Union.
"This book traces the evolution of the idea behind the institution of the European patent with unitary effect, including a comparative analysis of the existing parallel regional and international procedures for the protection of inventions. It presents a synthesis of the different phases of the negotiations which led to the adoption of the first unitary patent system within the European Union. In addition it examines the provisions of the two Regulations, of the UPC Agreement and of the jurisdictional system under Brussels I Regulation. Finally, it reproduces in the Appendix the texts of Regulations (EU) 1257 and 1260/2012 and of the UPC Agreement."
Alfredo Ilardi is former Head of the Collection of Laws and Treaties of the World Intellectual Property Organization.
Oberster Gerichtshof, Austria, 22 April 2015, Case No. 4 Ob 20/15t
In C-631/13 (Forsgren), the ECJ already ruled: Article 3(b) of Regulation No 469/2009 must be interpreted as precluding the grant of a supplementary protection certificate for an active ingredient whose effect does not fall within the therapeutic indications covered by the wording of the marketing authorisation.
Article 1(b) of Regulation No 469/2009 must be interpreted as meaning that a carrier protein conjugated with a polysaccharide antigen by means of a covalent binding may be categorised as an ‘active ingredient’ within the meaning of that provision only if it is established that it produces a pharmacological, immunological or metabolic action of its own which is covered by the therapeutic indications of the marketing authorisation.
Now, the Austrian Supreme court shed further light on the SPC-regulation when applying the ECJ’s judgement (Austrian Supreme Court, 4Ob20/15t).
AP Racing Limited v Alcon Components Limited, UK, High Court (Intellectual Property Enterprise Court), HHJ Hacon, 15 May 2015
HHJ Hacon’s judgment in AP Racing v Alcon Components concerned an application to strike out AP Racing’s statement of case under CPR Rule 3.4(2)(b) – ‘that the statement of case is an abuse of the court’s process or is otherwise likely to obstruct the just disposal of the proceedings’.
In a judgment of 28 January 2014, the Court of Appeal ruled that certain specific disc brake callipers for cars produced by Alcon had infringed AP Racing’s UK Patent (No. 2 451 690) and that AP Racing was entitled to choose between an account of profits or an inquiry as to damages. Following the finding of infringement AP Racing sought disclosure to enable AP Racing to make its election between the two remedies.
In doing so AP Racing asked for disclosure both for sales of brake callipers which had been the subject of the decision on infringement and other brake callipers sold by Alcon. Alcon objected. AP Racing responded by dropping its request for disclosure beyond the callipers which had been the subject of the infringement decision and then brought a separate infringement claim against Alcon in respect of the other callipers. Alcon applied for this new case to be struck out.
IPCom Gmbh & Co Kg v HTC Europe Co. Ltd & others, UK, High Court (Patents Court), Birss J, 24 April 2105
Birss J’s decision in IP Com v HTC is the latest decision in the on-going dispute between IPCom, Nokia and HTC. Previously Nokia and IPCom had been involved in litigation involving EP 1 186 189, a patent which Floyd J (as he then was) found to be invalid ( EWHC 3482 (Pat)), a decision which was upheld on appeal ( EWCA Civ 6).
The present case concerned EP 1 841 268 which was based on a divisional application of the EP’189 patent previously litigated by Nokia and IPCom. In 2011, this divisional patent EP’268 was found by Floyd J to be valid in an amended form and infringed ( EWHC 1470 (Pat)), another judgement which was upheld on appeal ( EWCA Civ 567).
Unwired Planet International Limited v Huawei Technologies Co. Limited, Samsung Electonics Co. Limited, Google Inc and others, UK, High Court (Patents Court), Birss J, 24 April 2015
Unwired Planet has sued Huawei, Samsung and Google in the UK Patent’s Court, alleging that the defendants have infringed five patents said by Unwired Planet to be essential to 2G, 3G and 4G standards, and a further patent that is not alleged to be essential to any standard. As well as traditional infringement and validity issues, the dispute raised complex questions of competition law. The case has been divided up into five “technical” trials, due to take place between October 2015 and June 2016, and one “non-technical” trial due to start in October 2016. The latter will consider matters of FRAND licensing, competition law, obligations under the ETSI IPR Policy and whether injunctions may be granted, and is now scheduled to last for 13 weeks.
The Unitary Patent Package is consistent with European Union Law – Spanish appeals rejected, by Wouter Pors, Bird & Bird The Hague
Introduction On 5 May 2015 the Court of Justice of the European Union rejected the appeals filed by Spain against the Unitary Patent Package. This is a landmark decision, clearing the way for more effective protection of innovation in Europe and at the same time resolving some interesting highly political issues of Union law.
EPO starts consultation on the President’s proposals for a structural reform of the Boards of Appeal
Decision R 19/12 of April 25, 2014 of the Enlarged Board of Appeal (see post dated 05/05/2014 here) prompted the Administrative Council of the EPO to discuss possible consequences for the autonomy of the Boards of Appeal. In December 2014, the temporary removal of a member of the Boards of Appeal by the President of the EPO aggravated the problem. It raised serious concerns among judges and practitioners in respect of the fundamental principle of separation of powers safeguarding the independence of courts (see posts dated 8/12/2014 here and 11/12/2014 here).
In its meeting of March 27, 2015, the Council had an exchange of views on a proposal submitted by the President entitled “Structural reform of the EPO Boards of Appeal” (doc. CA/16/15). The Council gave its general support to the policy lines as presented. First concrete proposals are envisaged for decision at the next Council meeting, in June 2015. It was agreed in the Council that these should take due account of contributions received as a result of a broad consultation of stakeholders.
Everseal Stationery Products Ltd v Document Management Solutions Ltd and others, Intellectual Property Enterprise Court, 1 April 2015,  EWHC 842 (IPEC), HHJ Hacon
The Intellectual Property Enterprise Court (IPEC) has found a patent for a “mailer” (a business form, letter etc which, after completion, is folded and then sealed around the edges) to be invalid for lack of novelty and obviousness. The judge, HHJ Hacon, held that the patent was anticipated by prior use of a third party’s mailer, and it lacked inventive step over each of two US patents cited as prior art.
He held that if the patent were valid it would be infringed by one of the first defendant’s mailers (no longer supplied) but not by the two other mailers (Mailers 2 and 3). Other defendants, officers of the first defendant, were alleged to be jointly liable for the first defendant’s infringements but the parties had elected that the issue of joint tortfeasance would be heard at the damages hearing if the judge’s findings were reversed on appeal.
Mr. Arne Forsgren v. Spanish Patents and Trademarks Office, High Court of Justice (Contentious-Administrative Chamber - 2nd Section) of Madrid, Spain, 9 July 2014, Docket No. 945/2012.
The wave of resolutions from the European Court of Justice (ECJ) concerning SPCs and the related interpretation of the provisions from the Regulation (EC) No. 469/2009 (hereinafter, “the Regulation”) recently brought the ECJ Judgment of 15 January 2015, in case C 631/13 (Arne Forsgren v. Österreichisches Patentamt), in reply to the request for a preliminary ruling submitted by the Austrian Supreme Patent and Trade Mark Adjudication Tribunal (Oberster Patent- und Markensenat) which concerned the request for grant of a SPC for Protein D present in the ‘Synflorix’ pneumococcal vaccine.
Before the rendering of the Judgment above, the High Court of Justice of Madrid had to decide upon the appeal filed by Arne Forsgren against the decision by the Spanish Patent Office (“SPTO”) not to grant an SPC for Protein D on the basis of the marketing authorization for ‘Synflorix’. It did so by means of a Decision dated 9 July 2014, where, accepting the patentee’s arguments, it revoked the previous rejecting resolution, and hence ordered to grant the requested SPC.
Saint-Gobain v. Knauf Insulation, Belgian Supreme Court, 12 March 2015
Patent - Scope of protection - Theory of equivalents - Amendment of the patent application - Interpretation of the granted claim - Impact of amendment on the scope of protection
A judgment deciding that the patent is not infringed, taking into account that the patent application as initially filed has been amended and that in its final version, the amended claim includes a feature which is missing in the challenged product, is consistent with Article 26 of the Belgian Patent Act (defining the scope of protection) and does not contradict the theory of equivalents.
In the present case, the judgment interpreting the amended claim of the patent as excluding from its scope products which do not exclusively contain glass fibers having a diameter of less than 8 microns, and deciding that the manufacturing of products containing glass fibers having a diameter greater than 8 microns in combination with glass fibers having a diameter less than this dimension is not a patent infringement, is legally justified.
The judgment of the Court of appeals was published on this blog here.
The Munich International Patent Law Conference entitled: "The Cost of Litigating Patents" shall be held on Friday, 19 June 2015 from 9 a.m. - 5 p.m. in Munich.
The conference will be held in English with no translation provided.Topics include: - The Cost of Litigating Patents, Part I: Germany, UK, US; - The Cost of Litigating Patents, Part II: Relevance of Cost for Patent Litigation; - The Cost of Litigating Patents, Part III: Calculation of Cost in Case Scenarios
Christoph Ann, Professor for Intellectual Property Law, Technische Universität München, Germany, - Winfried Bausback, Bavarian State Minister of Justice, Germany - Cornelia Rudloff-Schäffer, President, German Patent and Trade Mark Office - Matthias Zigann, Presiding Judge, Munich Regional Court I, Germany - The Rt Hon Sir Christopher Floyd, Lord Justice Court of Appeal, United Kingdom - James L. Robart, Federal Judge, U.S. District Court for the Western District of Washington, USA - Marie-Christine Courboulay, Vice President, Tribunal de Grande Instance de Paris, France - Türkay Alica, Judge, Civil Court of Intellectual and Industrial Property Rights Ankara, Turkey - Johannes Heselberger, Attorney-at-Law, European Patent Attorney, Bardehle Pagenberg, Germany
More information and registration details may be found here.
The much awaited twins, G 2/12 (Tomato II) and G 2/13 (Broccoli II) are out (one may read them here). The Enlarged Board of Appeal (EBoA) of the EPO has decided that patents for plants and plant material can be granted even if the process of production contains or consists of essentially biological steps.
Although the ruling was not unexpected, in view of the public interest, it is a comforting feeling for IP professionals to learn that Article 53(b) EPC (exclusion on the patentability of essentially biological processes for the production of plants) “does not have a negative effect on the allowability of a product claim directed to plants or plant material”.
The Academy of European Law (ERA), based in Trier, Germany, is organising a conference on “Litigation and Settlements in Patent Disputes”
The conference, which is to be held in Trier on 7-8 May 2015, aims to provide patent litigators and attorneys with practical guidance on how to make the best use of EU and international legal instruments in litigation and mediation/arbitration proceedings.
Key topics are:
Litigating before the Courts - Choice of courts and applicable law - Domestic and cross-border injunctions - Settlement of patent litigation and FRAND commitments - Case management before the Unitary Patent Court and before national Courts - Courts procedures over the EU - Validity of no challenge clauses
We have reported earlier about the new book Proceedings Before the European Patent Office. The post may be read here.
The publisher now kindly offers a 35% discount on the price (both hardback and paperback). In order to obtain the discount, readers may contact the publisher at: email@example.com and quote the discount code PTNR35.
Warner-Lambert LLC v (1) Actavis Group PTC EHF, (2) Actavis UK Ltd, (3) Caduceus Pharma Ltd v National Health Service Commissioning Board (Respondent) v (1) Teva UK Ltd, (2) Generics (UK) Ltd, (3) Dr Reddy’s Laboratories (UK) Ltd, (4) Consilient Health Ltd, (5) Sandoz Ltd, (6) Department of Health (Interested parties), Patents Court, 2 March 2015,  EWHC 485 (Pat), Arnold J
In a previous judgment (reported on EPLAW Patent Blog on 29 January 2015, which may be read here), the English Patents Court dismissed an application by Warner-Lambert for an interim injunction in respect of Actavis’ generic pregbalin. In this latest judgment, the Patents Court ordered a third party, the NHS Commissioning Board (“NHS England”), to issue guidance that pregbalin should be prescribed by reference to the brand name Lyrica® when prescribed for the patented indication (being neuropathic pain) and, when prescribed for non-patented indications, should be prescribed by reference to the generic name.
NHS England is to issue the guidance to the Clinical Commissioning Groups and the NHS Business Service Authority, those being the bodies responsible for providing such guidance to prescribing doctors and community pharmacies respectively.
Enlarged Board of Appeal EPO, G 2/ 12 and G 2/13, Tomatoes II and Broccoli II, 25 March 2015, with thanks to DX Thomas for alerting us to the decision
1. The exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.
2. In particular, the fact that the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application does not render a claim directed to plants or plant material other than a plant variety unallowable.
3. In the circumstances, it is of no relevance that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC.
H.Lundbeck A/S, Lundbeck España, S.A. & Almirall, S.A. v. Synthon Hispania, S.L., Cantabria Pharma, S.L., Mylan Pharmaceuticals, S.L. et al., Court of Appeals (15th Section) of Barcelona, Spain, 22 October 2014, Docket No. 371/2013
TRIPS Agreement and patentability of pharmaceuticals in Spain: another turn of the screw.
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In a Decision rendered on 22 October 2014, the Court of Appeals of Barcelona confirmed the earlier Decision of Commercial Court no. 4 dismissing Lundbeck’s and Almirall’s (former’s licensee) actions for patent infringement against a large number of generics companies marketing in Spain Escitalopram generic drugs.
Enlarged Board of Appeal decision G 3/14, 24 March 2015, with thanks to DX Thomas, for sending in the decision
In considering whether, for the purpose of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC.
Sharp Kabushiki Kaisha (Appellant Applicant), Technical Board of Appeal 3.5.07, 18 July 2014, Case No. T 1214/09-3.5.07 "Information managing device/SHARP", by Stefan V. Steinbrener, Bardehle Pagenberg
Technical Board of Appeal 3.5.07 did not deny any contribution by the claimed arrangement to improved search and retrieval of stored images. However, in the Board’s judgment, the arrangement was not based on considerations other than those proper to the field of designing presentations of information for human viewing and hence was not an expression of any technical principle.
One of the more complex items on the non-exhaustive list of non-inventions set out in Article 52(2) EPC is the exclusion of presentations of information. Neither in the Convention nor in its preceding travaux préparatoires is any explanation given of what has to be understood by a “presentation of information”.
Nor is the existing case law of the Boards of Appeal consistent in this respect: while presentation of information is seen by some Boards (see e.g. decisions T 49/04-3.4.03 or T 1749/06-3.4.03) to only relate to the information contents, but not to its layout (only “what” is excluded, but not “how”), other Boards (see e.g. decisions T 1143/06-3.5.01 or T 1741/08-3.5.06) are much stricter and base their argument on whether or not the effect of data visualization, including both contents and layout, is only on the mind of the user, in particular by easing a mental evaluation or lowering a cognitive burden. In this case, a technical effect is denied, more or less irrespective of whether such evaluation step may occur in an otherwise technical environment.
Law professors petition against the Unitary Patent Package – but are the arguments correct? Wouter Pors, Bird & Bird The Hague
A petition called “The Union cannot be stripped of its powers by the Member States: the dangerous precedent of the patent package”, signed by more than 40 law professors, retired law professors and lawyers was published on the IPKat blog on Friday 13 March 2015 (the petition may be read here). The timing of this petition is remarkable. One would have expected such a petition to be published around the time when the Council Decision authorising enhanced cooperation in the area of the creation of unitary patent protection of 10 March 2011 (2011/167/EU) was published, or maybe early 2013, when both the Unitary Patent Regulation, the Regulation on Translation Arrangements and the Unified Patent Court Agreement (UPCA) had become available to the public. Instead, it is published in between the Advocate-General’s opinion on the Spanish appeals against the two Regulations and the expected judgment of the Court of Justice of the European Union on those appeals.
Proceedings before the European Patent Office, a Practical Guide to Success in Opposition and Appeal, by Marcus Müller and Cees Mulder
Edward Elgar Publishing recently published its new book on proceedings before the EPO. Rudolf Teschemacher, Bardehle Pagenberg, states on the cover:
"...Proceedings before the European Patent Office: A Practical Guide to Success in Opposition and Appeal keeps the promise made in its title and helps the practitioner to avoid procedural pitfalls. The authors come from different backgrounds and the book profits from their different perspectives. Two features of the Guide deserve to be highlighted. First, the emphasis on the interrelations between the different stages from drafting the application until the oral proceedings in opposition and appeal proceedings. Second, the numerous examples (from) relevant case law and the practical advice complementing the explanation of the procedural problems arising at different stages of opposition and appeal proceedings. In this way, the Guide illustrates the rules of the game before opposition divisions and boards of appeal and may help the users to avoid unpleasant and dangerous surprises. "
Syngenta v. Dutch Patent Office, Council of State, 18 February 2015, case no. 201406096/1/A3, with thanks to Edmon Oude Elferink, Conny Delissen, Willem Hoorneman and Rogier de Vrey, CMS Derks Star Busmann, for sending in a translation of the decision in English as well as a head note
The Dutch Council of State -the highest administrative court in the Netherlands- decides that it is possible to rectify – in this case: extend – the term of protection of an SPC, after it has been granted, if the term of protection of the certificate is incorrectly calculated.
In this case, the Netherlands Patent Office ("NPO") granted Syngenta an SPC on 9 December 2005 on the basis of a ('mono') Polish MA. It is now undisputed, after the University of Queensland judgment of the ECJ (C-630/10), that the SPC was granted on the basis of the wrong MA. The NPO should have used the Finnish "combi-MA" for the calculation of the term of the SPC. As a result, the certificate was valid until 24 March 2014 while, had the Finnish "combi-MA" been used, the term of the certificate would have extended for more than 1½ year.
Gallus Druckmaschinen GmBh v. MPS Systems B.V., District Court The Hague, the Netherlands, 4 March 2015, Case No. HA ZA 14-530, with thanks to Willem Hoyng and Robin van Kleeff, Hoyng Monegier, for providing the judgment as well as a head note
Gallus started accelerated patent proceedings against MPS on the basis of a patent on a rotary printing press for different printing technologies. MPS argued that it did not infringe, inter alia because its rotary printing presses did not comprise “an impression cylinder which is not replaced when the printing heads are replaced”. MPS asserted in its counterclaim that the patent was invalid.
Gallus subsequently amended the apparatus claims into method claims, but left out the above-mentioned feature and asserted that these new claims were infringed. MPS objected, since the accelerated regime only provides the patentee with a possibility to file a written reply in the (invalidity) counterclaim. The court allowed the objection, removed the case from the accelerated regime. The court then allowed the claim change, but provided MPS an additional opportunity to respond in the main (infringement) claim.
Hospira (UK) Limited v Genentech, Inc., England and Wales Court of Appeal (Elias, Kitchin and Floyd), London, UK, 6 February 2015, Neutral Citation Number:  EWCA Civ 57
In this judgment the Court of Appeal in England and Wales decided a case regarding Genentech’s patent EP (UK) 1 210 115 relating to a dosing regimen for the anti-cancer drug trastuzumab (Herceptin). The Court of Appeal upheld the conclusion of the Patents Court (Birss J) that the patent was invalid for obviousness. At first instance Birss J also held that the patent was invalid for insufficiency and other grounds of invalidity based on loss of priority date, however, the Court of Appeal did not consider sufficiency or priority on appeal.
EPO, Enlarged Board of Appeal, interlocutory decision of 17 February 2015 in case R 02/14 – Objections to the Chairman and members of the Enlarged Board of Appeal
On May 5, 2014, this Blog reported on the decision of the Enlarged Board of Appeal (EBA) in case R 19/12 allowing in a review case an objection to the Chairman of the EBA based on suspicion of partiality.
The EBA held that, considering the integration of the Chairman as Vice-president DG 3 into the administration of the Office at the management level, the suspicion of the petitioner that the replaced Chairman might possibly not be able to entirely detach his jurisdictional activities from the constraints and influences due to his participation in management decisions of the Office could not be considered to be a merely subjective impression or a merely general suspicion. Rather, a reasonable, objective and informed person might have good reason to fear that the Chairman might possibly not exercise his judicial functions without being influenced by requirements which are referred to him being the Vice-president DG 3.
Request for a preliminary ruling from the Cour d’appel de Paris (France) lodged on 9 December 2014 — Genentech Inc. v Hoechst GmbH, formerly Hoechst AG, Sanofi-Aventis Deutschland GmbH, (Case C-567/14)
‘Must the provisions of Article 81 of the Treaty (now Article 101 TFEU) be interpreted as precluding effect being given, where patents are revoked, to a licence agreement which requires the licencee to pay royalties for the sole use of the rights attached to the licensed patent?’
Read a previous post on the case, by Pierre Véron and Amandine Métier, Véron & Associés entitled 'A 100 Million Euro question referred to the CJEU' here.
Zoontjens Beton B.V. v. Livingroof, District Court The Hague, the Netherlands, 28 January 2015, Case No. HA ZA 13-1307
Zoontjens Beton files suit against Livingroof for patent infringement. The court states that the average man skilled in the art will read claim 1 in such a way that the support disk itself is sturdy enough to support the tile which is placed theron. Therefore, Livingroof does not infringe.
Novartis AG v. Sun Pharmaceutical Industries (Europe) B.V., Court of Appeal The Hague, The Netherlands, 27 January 2015, Case file number: Case file number: 200.1 50.713/01, with thanks to Rutger Kleemans, Freshfields, for sending in the judgment as well as a translation in English
The Court of Appeal of The Hague held Sun liable for indirect infringement of Novartis’ Swiss type claim on (in short) the use of zoledronic acid in a specific dosage range, form and regime for the treatment of osteoporosis, despite the fact that Sun was marketing its generic zoledronic acid under a skinny label on which the patented indication was carved out.
The Court held that there were various circumstances on the basis of which Sun at least should have known that its generic zoledronic acid was being used for the patented indication. The drug preference policy of a health insurer that made Sun its preferred supplier, forced pharmacies to give out Sun’s generic zoledronic acid – no matter what the indication was, and irrespective of whether or not the Novartis’ brand medicine was mentioned in the prescription –. Furthermore, the amount of sales were such that they could reasonably not be attributed to the non-patented indication alone.
Finally, in the eyes of the Court, Sun had not done enough to prevent that the generic zoledronic acid it delivered would be used for the patented indication. Sun had sent notifications to various parties informing them of the indication that was still patented, but these were, according to the Court, toothless, as Sun had failed to do everything in its power to ensure that its generic zoledronic acid would not be used for the treatment of osteoporosis.
Read the decision (in Dutch) here. Read the decision (in English) here.
Plaintiff v. Arca Printersupplies BV, Innova Art Ltd. and GMC Marketing Ltd., District Court The Hague, The Netherlands, 4 February 2014, case number C/09/466982/HA ZA 14-648
Plaintiff designed the Roll Panel: a panel with glue on which a picture can be attached. After attaching the picture, the picture and the panel on which it is glued can be folded using the previously applied fold lined to create a fitted frame.
In 2008, Arca and Innova showed interest in the Roll Panel and met with plaintiff to come to a possible collaboration. Plaintiff claims that it was clear to all parties that they had the obligation to keep the discussed design confidential.
In 2009, after the collaboration did not work out, the Applicant found out that Arca and Innova offered a product identical to the Roll Panel on their website: the "Jet Master". In addition, GMC had filed 11 patent applications (e.g. EP 2456336 and WO 2011010085).
In the proceedings, Plaintiff claims 8 actions against Arca, Innova and/or GMC relating to tort and the alleged infringement of the confidentiality agreement. Also, Plaintiff claims 5 actions against GMC concerning the patents.
As Arca is domiciled in the Netherlands while Innova and GMC are domiciled in the UK, the question arose whether, in accordance with article 6 Regulation (EC) 44/2001, the claims are so closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable judgments.
This Blog has recently published an open letter of the European Patent Lawyers Association (EPLAW) to the Delegations of the Administrative Council (AC) of the EPO. EPLAW joined the chorus of patent professionals expressing their concerns about the temporary removal of a member of the Boards of Appeal (BoA) from office, as ordered by the President of the EPO and confirmed by the AC. In addition to public discussions among patent professionals, further developments regarding the status of the BoA have taken place "behind the scenes". The following is a summary of proposed or already enacted measures that have come to my attention: Among others, the AC adopted in its December meeting an amendment to the Service Regulations affecting the status of the members of the BoA as civil servants of the EPO. Inter alia, this amendment provides the following:
Warner-Lambert Company LLC v Actavis Group PTC EHF, Actavis UK Ltd, Caduceus Pharma Ltd, Patents Court, 21 January 2015,  EWHC 72 (Pat), Arnold J
The English Patents Court has refused an application made by Warner-Lambert for interim relief in respect of Actavis’ generic pregabalin medicine known as Lecaent. Pregabalin is the active ingredient in Warner-Lambert’s Lyrica medicine which is authorised to treat several conditions. Compound patent protection for pregabalin expired in 2013 but Warner-Lambert has a second medical use patent with Swiss-form claims to the treatment of pain. Arnold J refused to order the interim relief requested by Warner-Lambert on the grounds that: (i) Warner-Lambert did not have an arguable case of infringement by Actavis of its pain patent and (ii) even if there was an arguable case of infringement, he would not have granted an interim injunction on the balance of the risk of injustice.
The European patent system exceeds the boundaries of Europe – access to patent protection in Morocco via a European patent application
The agreement on the validation of European patent applications and granted European patents in Morocco signed in December 2010 has been implemented by the Moroccan authorities. The President of the EPO and the Moroccan Minister of Industry announced that the agreement will enter into force on March 1, 2015. The Moroccan implementing legislation has not yet become known.
At present, extension agreements exist with Bosnia/Herzegovina and Montenegro. Such an agreement was not possible for Morocco as a non-European state. Otherwise, the first validation agreement works in the same way as the known extension agreements, making it possible for applicants and owners of European patents to have their patents recognized in Morocco against the payment of the applicable fee.
Another validation agreement with Moldova was signed in October 2013. The Republic of Moldova has not yet adopted the necessary implementing regulations.
Read the Communique of the EPO of January 20, 2015 here.
Reported by Rudolf Teschemacher, Bardehle Pagenberg
Sanofi-Aventis Deutschland v. Lilly France, order of the presiding judge of the tribunal de grande instance de Paris of 15 December 2014
This decision, which relates to a biosimilar, sheds further light on the scope of the Bolar exemption in France, which confirms to be broad; it also shows that French preliminary injunction proceedings cannot be a way to obtain control measures in the absence of actual or imminent infringement.
This decision was issued by the tribunal de grande instance de Paris in the framework of preliminary injunction proceedings started by Sanofi-Aventis Deutschland (hereafter “Sanofi”) on the basis of a French supplementary protection certificate covering insulin glargine and protecting its product Lantus until 5 May 2015 against Lilly France which has developed a biosimilar of Sanofi’s Lantus and takes an active part to the work necessary to obtain marketing authorizations in various countries of the world for this biosimilar (hereafter “BIV”).
Shenzhen Promotion Concept Co. LTD and Folat B.V. v. Seatriever International Holdings Limited, District Court The Hague, The Netherlands, 10 December 2014, Case No. C/09/476286 / KG ZA 14-1301
The provisional relief judge of the Court of The Hague held that the patentee acted unlawfully towards a third party by sending warning letters to customers of that third party with an allegation of infringement, whilst he knew or should have known that there was no infringement.
Idenix Phamaceuticals, Inc v Gilead Sciences, Inc and Gilead Sciences Ltd and Centre National de la Recherche Scientifique and Universita Degli Studi de Cagliari and L’Universite Montpellier II, Patents Court, Neutral Citation Number:  EWHC 3916 (Pat)
The UK Patents Court has held, in a judgment handed down on 1 December 2014, that European Patent (UK) No. 1 523 489, which concerned certain compounds for the treatment of Flaviviridae including Hepatitis C, was invalid on the grounds of lack of novelty, obviousness, insufficiency and (for some claims only) added matter.
Idenix contended that the sale by Gilead of Solvaldi (sofosbuvir) infringed the patent. Gilead counterclaimed for invalidity, including lack of novelty over their earlier International Patent Application. This claim required the judge (Arnold J) to consider the legal claim to priority of that application. This raised issues of fact and US law. Together with the other invalidity issues raised the judgment stretches to 621 paragraphs.
The case is interesting for a number of reasons but of particular interest is the part of the judgment that considers the application of the EPO case law in the context of obviousness. This judgment is the first time that a UK judge has considered the EPO Board of Appeal decision AgrEvo (T 939/92) in the context of obviousness. Previously the AgrEvo type analysis has been rolled up into insufficiency (see e.g. Regeneron v Genentech). Idenix suggests an approach to obviousness more aligned with that of the EPO.
Property and contractual aspects of Unitary Patents and of patents in the UPC system by Wouter Pors, Bird & Bird The Hague
Introduction The introduction of the Unitary Patent Package, consisting of the Unitary Patent (UP) and the Unified Patent Court (UPC) raises new issues with regard to patents as an object of property and with regard to contractual aspects of both Unitary Patents and traditional European patents. The law of property and contract law have not been harmonized throughout the European Union. Actually, there are big differences, especially between common law systems such as the United Kingdom and Ireland on the one hand and civil law systems on the other hand.
The Unitary Patent Package is not aiming at providing a solution for this. Actually, recital 6 of the Unitary Patent Regulation (UPR) provides: “As an object of property, a European patent with unitary effect should be dealt with in its entirety, and in all the participating Member States, as a national patent of the participating Member State determined in accordance with specific criteria such as the applicant’s residence, principal place of business or place of business.” This is then repeated in Article 7(1) UPR, followed by further details on how the place of business is determined.
EPO, G 1/13, EBA, decision of 25 November 2014 – Fischer-Tropsch Catalysts/SASOL TECHNOLOGY II
The contested patent was opposed by Formalities Bureau Limited (FBL). The opponent’s representative appears in the UK Company Register in the Section “Directors and Secretaries” of FBL. During the opposition proceedings FBL was struck off the Register. The opposition proceedings were continued without anyone noticing the deletion in the Register. The Opposition Division held that the patent could be maintained in a limited version. FBL appealed. Shortly before the oral proceedings, the proprietor discovered that FBL had ceased to exist. On FBL’s request, the UK High Court made an order restoring the name of FBL to the Register of Companies. The Technical Board of Appeal referred questions relating to the admissibility of the opposition and the appeal to the Enlarged Board of Appeal.
Under the EPC, any natural or legal person, or anybody equivalent to a legal person by virtue of the law governing it may be a party to the proceedings. Thus, the EBA notes as a starting point that legal entities exist only by virtue of the national legal system which governs their incorporation, subsequent existence and cessation. Therefore, the Board recognizes that FBL existed and had capacity to act before it ceased to exist and that the same applied after it was restored to existence.
Since the appeal, had been filed at a time when FBL was deleted in the Register, the next question was whether national was also to be followed as regards the deemed retrospective existence of LBL as provided for in UK law. The EBA states that there are limits on the extent to which the EPO should follow national law and mentions as an example the free transfer of an opposition which may be valid under national civil and is not accepted under the procedural law of the EPC. In the absence of any relevant provision of the Convention, the EBA weighs the interests of the parties to the proceedings and of the general public and concludes in summary that national law is to be applied with the consequence that opposition and appeal are to be considered admissible.
BASF SE v. IGM Resins B.V., preliminary injunction proceedings, District Court The Hague, The Netherlands, 16 December 2014, Case No.C/09/469547 / KG ZA 14-827
BASF accuses IGM Resins of selling a product which is a direct result of a process patented by BASF. IGM Resins gives 3 different explanations regarding the process used. According to the President this does indeed give rise to questions, also in view of earlier alleged infringing acts.
However, it would go to far to based on only a declaration of BASF's own employee assume that (i) the process used according to IGM is not possible and (ii) that thus the BASF process is used. Based on IGM's reasoned defence, BASF did not sufficiently state the infringement. The presence of an independent expert (as suggested by IGM) could have taken away any doubt, according tot the President. BASF did not agree to this approach, as the process could still be manipulated. The President thought this to be unlikely and denied BASF's claim.
Letter from the RT Hon LJ Floyd and Advocate General to the Dutch Supreme Court Robert van Peursem to the Administrative Council of the EPO:
"We, as external members of the Enlarged Board of Appeal of the European Patent Office, wish to express our extreme concern at the action of the President of the European Patent Office in imposing a house ban on a member of the Board of Appeals"
The oral hearing on the Rules of Procedure of the Unified Patent Court, by Wouter Pors, Bird & Bird The Hague
Introduction The Unified Patent Court (UPC) is based on three documents: the Agreement on a Unified Patent Court (UPCA), the Statute of the Unified Patent Court and the Rules of Procedure (RoP), which are based on Article 52 UPCA.
The 15th draft of the Rules of Procedure was published on 31 May 2013, followed by a public consultation. There were more than 110 written submissions in this public consultation. The results of that consultation were incorporated in a redline 16th draft, published 31 January 2014, together with a Digest by the Expert Group (the former RoP drafting committee). The digest reports the views and suggestions submitted during the consultation, comments on those views and suggestions by Prof.dr. Winfried Tilmann of the Expert Group and the decisions made by the Expert Group. These decisions were made after the draft had also been discussed with a number of patent judges at the Venice Conference.