In the first of our Year in Review series, Bird & Bird’s IP lawyers summarise some of the notable patent decisions in France last year.
In both decisions, the presiding judge of the Paris Court of First Instance dismissed IPCom’s preliminary injunctions on the ground that they would be disproportionate.
He considered that a patentee invoking an SEP had to establish an irreparable harm and noted that irreparable consequences for the defendants must also be considered. The judge found that IPCom did not evidence any irreparable harm, although the company had attempted to characterise such harm by a loss of value of its patent portfolio. Inversely, he noted that the scope of the requested injunction, its lasting consequences on sales, its lasting impact on the brand image, and the major disruption to the defendant’s distribution channels, would constitute irreparable harm.
The judge then concluded that ordering a preliminary injunction until the expiry of the patent (15 February 2020) would be obviously disproportionate, underlining that this would provide undue leverage to IPCom and could enable it to impose a non-FRAND licence.
One very general basic principle of French procedural law is that the claimant (within proceedings before the court) needs to show that they have standing to act. This principle can lead to interesting developments when it comes to patent nullity actions, as was again observed in this decision.
Nullity actions are frequently started by competitors of the patentee. In such cases, French courts normally require the claimant to demonstrate that it is about to or might soon operate the patented technique or a similar one. The X v Merck case is quite uncommon in that the claimants in this case were not competitors but patients who were prescribed with Levothyrox®. A few years ago, Merck changed the formulation of this medication, which led to a reported increase of the alleged side effects among some patients. The patients filed the lawsuit seeking to nullify the patent for Levothyrox® so that pharmaceutical companies would be free to sell alternative formulations including the old one.
When considering to what extent the patients/claimants had standing to act, the judge noted the very hypothetical nature of the motivation of the claimants, remarking that there was no certainty that alternative formulations of Levothyrox® would be put on the market if the patent was nullified. Unsurprisingly, the judge therefore considered this motivation insufficient for the patients to demonstrate that they had standing to act. The court dismissed the case.
Parties often diverge when it comes to choosing a forum for the determination of FRAND terms and conditions. This decision may encourage parties who would like a French court to decide on such matters.
TCL started legal action against Philips and the ETSI before the Judiciary Court of Paris while it was being sued by Philips in the UK for infringement of two patents that had been declared essential to the UMTS and LTE standards. TCL claimed that Philips had not complied with its undertaking to grant a FRAND licence to TCL under the ETSI IPR policy. It asked that Philips be ordered to grant such a licence under conditions determined by the court, while ETSI would be ordered to contribute to the grant of that licence.
Philips tried to have the case dismissed, in favour of the pending UK action, by claiming a lack of jurisdiction and additionally relying on the lis pendens and related rules in Articles 29 and 30 of the EU Brussels I Regulation. However, having considered such rules and Article 8 of EU Brussels I Regulation, the French judge dismissed Philips’ requests and confirmed its jurisdiction.
The decision has been appealed but the case was settled before the Court of Appeal rendered its decision.
With this decision, the Paris Court of Appeal keeps the door open to patent infringement lawsuits by SEP owners facing an anti-suit injunction.
After Lenovo requested the Northern District Court of California to set FRAND licensing conditions for IPCom’s worldwide SEP portfolio, Lenovo additionally filed before the same judge a motion for anti-suit injunction to prevent IPCom from launching any infringement action (worldwide) pending the decision on the FRAND licensing conditions.
The Paris Court of Appeal considered that preventing IPCom from filing a patent infringement lawsuit in France violated the patent owner’s fundamental rights and causes a “manifestly unlawful disturbance”. Lenovo was therefore enjoined to withdraw the Californian court request for an anti-suit injunction with respect to the French part of the European patent.
This French decision was part of the well-known pemetrexed patent dispute and came after several parallel decisions were rendered in different EU jurisdictions (notably the UK, the Netherlands and Germany).
Pemetrexed is a chemotherapy drug produced and marketed by Eli Lilly under the name Alimta®. It is covered by European patent EP 1 313 508 which protects the use of pemetrexed disodium in combination with vitamin B12.
Eli Lilly filed an action on the merits before the Paris Court against Fresenius claiming that Fresenius’ generic product formulated with a different pemetrexed salt (pemetrexed diacid) would be infringing. Fresenius’ invalidity arguments were dismissed.
With respect to patent infringement, the most noticeable point is that the French court ruled that Fresenius’ acts constituted direct infringement of Eli Lilly’s patent (no matter the difference in the pemetrexed salt used) and thus the court did not examine indirect infringement based on the doctrine of equivalents (which was the ground mainly disputed in other countries).
The court awarded Eli Lilly €28 million in damages, which, to the best of our knowledge, appears to be the highest sum ever awarded for patent infringement in France. This decision may be appealed.
Rejecting the more liberal approach previously adopted in Neurim (C-130/11), the CJEU held that a marketing authorisation cannot be considered to be the first marketing authorisation where it covers a new therapeutic application of an active ingredient, or of a combination of active ingredients, and that active ingredient or combination has already been the subject of a marketing authorisation for a different therapeutic application.
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