Bayer is the owner of two process patents concerning the synthesis of the compound drospirenon.Sandoz has introduced a generic product which is manufactured by the Italian company Industriale Chimica (IC). IC also holds patents for the production of drospirenon.
In case of both patents invoked by Bayer, there is no literal infringement as IC applies another reagent/reactant in the process than the one specified in the claims of the concerned patent. The question is therefore in both cases whether the reagent/reactant used by IC can be regarded as equivalent measure. The judge comes to the conclusion that this is not the case. In its reasoning the court applies the function-way-result test, and concludes that it is insufficiently substantiated that the alternative compounds work in the same way. Furthermore the judge attaches value to the fact that the use of the alternative compounds is itself the subject of patent protection and has certain advantages compared to the use of the compounds mentioned in the processes patented by Bayer.
Read the judgment (in Dutch) here.
Head note: Paul van Dongen