Crème de la crème of French patent cases

Due to a reorganisation at the French first-instance courts, judges are handing down rulings faster than before the pandemic. For instance, the Judicial Court Paris recently ruled on a number of high-profile cases. Further oral hearings in wide-ranging SEP battles, such as the Intellectual Ventures suit, are imminent.

In particular, French proceedings in pan-European disputes are gaining momentum. A team from Bird & Bird is fighting for Edwards Lifesciences in the major proceedings over five European patents covering a transcatheter heart valve.

The UK courts have handed down the first judgments, and parallel nullity suits and infringement proceedings are underway in Germany. The main proceedings are also now set to start in France. On Meril’s side is a team from Gide.

French patent courts can differ

On the other hand, the French part of the international dispute between AstraZeneca and various generic companies over cancer drug Fulvestrant came to nothing. Following differing rulings of the German Federal Court of Justice revoking one patent, and the Court of Appeal in The Hague upholding two patents, the proceedings were supposed to run their course in France.

In France, Sandoz kicked off the proceedings with a nullity suit against the Swedish originator (case ID: 18/10444). Hoyng ROKH Monegier for AstraZeneca, and Schertenleib Avocats for Sandoz, had already geared up for a trial in summer 2020. However, the pandemic meant the courts postponed the trial until November.

But the parties cancelled this date. According to JUVE Patent information, it is unlikely that proceedings will resume. Some of the disputed patents have already expired. Thus, it is not economically beneficial for the companies to pursue the dispute in France.

However, in 2020 courts handed down rulings in the first or second instance in numerous disputes. JUVE Patent summarises these below. For a full overview of the French patent market in 2020 and 2021, read the latest JUVE Patent France rankings 2021. (Co-author: Christina Schulze)

Top French patent cases 2020

1. Philips against TCL: Paris Court decides on jurisdiction in FRAND case
2. French court awards Eli Lilly high damages for pemetrexed
3. Court divides questions of validity and infringement from FRAND in Intellectual Ventures case
4. IPCom fails in battle over 100A in French courts
5. Quadlogic against Enedis on smart meter technology
6. Papst Licensing against PSA on diesel injection
7. Bayer against Ceva after the EPO ruling
8. Gilead against Generics over Truvada
9. Several setbacks for MSD against Generics
10. Lufthansa against Thales in battle over in-flight personal power supply

1. Philips against TCL and ETSI

Yes we can: Paris court claims jurisdiction in FRAND case

It is likely that the Tribunal Judiciaire in Paris will play a bigger role in European FRAND disputes ©sisterspro/ADOBE STOCK

Who can decide on FRAND rates? The Judicial Court of Paris declared itself competent in the cross-border case between Philips and TCL. Decisions on further issues were set to follow but fell victim to the first lockdown. In the end, JUVE Patent has been told, the parties settled.

Therefore, no final clarification as to whether the European Telecommunication Standards Institute (ETSI) should be involved in disputes between its members emerged. Once again, the issue will play a role in a suit filed between Philips and Xiaomi at the end of 2020.

In early 2019, TCL filed the suit at the Judicial Court of Paris, in response to a claim by Philips against TCL at the UK High Court (case ID: HP-2018-000032). Philips’ main objective was for the UK court to determine a global FRAND licence rate for its entire UMTS and LTE patent portfolio. However, TCL contested the UK court’s jurisdiction. The party argued that, because ETSI is based near Antibes, jurisdiction should lie with the French court.

Accordingly, Philips responded with a jurisdictional challenge before the same Paris court (case ID: RG 19/02085). On 6 February 2020, the Judicial Court Paris dismissed all of Philips’ motions. The court claimed jurisdiction in the FRAND issue.

Regarding ETSI’s role in the patent dispute, the judge considers that in principle there is a sufficient connection between TCL’s claims against ETSI on the one hand, and those against Philips on the other. However, determining the extent of ETSI’s involvement was to be part of the main hearing on 2 June 2020. Due to the pandemic, this did not take place.

According to JUVE Patent information, at the end of 2020 the parties reached an agreement. Thus, the parties have settled the dispute.

The advisors

For Philips
Hoyng ROKH Monegier Véron (Paris): Sabine Agé

For TCL
Schertenleib Avocats (Paris): Denis Schertenleib, Ombeline Degreze-Pechade

For ETSI
Amar Goussu Staub (Paris): Cyrille Amar
In-house (Paris): Christian Loyau (Legal Affairs and Governance Director), Sonia Guedda

Judicial Court of Paris, 3rd chamber, 1st section, Paris
Nathalie Sabotier (presiding judge)

2. Eli Lilly against Fresenius and Zentiva over pemetrexed

Paris court awards highest damage in patent case in France

Eli Lilly’s cancer drug pemetrexed has market exclusivity again in France ©Tyler Olson/ADOBE STOCK

In summer 2020, Eli Lilly caused quite a stir in France when the Judicial Court of Paris awarded the company 28 million euros in damages. This is a large sum for damages by French standards. Additionally, through a sales ban ruling Eli Lilly secured exclusivity for its pemetrexed drug to the French market. Competitor Fresenius Kabi withdrew its product.

In January 2021, Eli Lilly scored another success against competitor Zentiva at the Paris Court of First Instance (case ID: 19/06927). The judges also prohibited the company from selling pemetrexed in France. In addition, the court ordered that the provisional sum of 4,000,000 euros be deducted from the damages. Again, by French standards, this is a large claim for damages.

Thus, twice Eli Lilly won a large claim for damages based on the same patent and drug. Observers suspect that the French judges want to position themselves as originator- and pharma-patent holder friendly. Previously, it was relatively difficult for pharma companies to obtain injunctions or large damages in France.

Fresenius Kabi and Zentiva have each filed an appeal against the judgments. The court will hear the merits of the Zentiva case on 15 June 2021. This is the same day that Eli Lilly’s patent expires.

The advisors

The proceedings meant another win for the young Hogan Lovells team, led by up-and-coming litigator Stanislas Roux-Vaillard. For its first French infringement proceedings, Zentiva worked with mixed IP firm Casalonga.

For Eli Lilly
Hogan Lovells (Paris): Stanislas Roux-Vaillard (lead), Adrien Bonnet

For Zentiva
Casalonga (Paris): Arnaud Casalonga, Floriane Codevelle

Judicial Court of Paris, 3rd chamber, 1st section, Paris
Nathalie Sabotier (presiding judge)

3. Intellectual Ventures against Orange, Bouygues, et al.

Judicial Court of Paris divides questions of validity and infringement from FRAND

DSL technology is subject to ITU Recommendations and must be licensed on a RAND basis ©Fotos 593/Adobe Stock

NPE Intellectual Ventures is battling telecommunications operators across Europe, and especially France and Germany, in an extensive series of proceedings over DSL technology. Intellectual Ventures accuses various telecommunications companies of infringing patent EP 1 694 020. This protects a multicarrier modulation system and method.

In January 2020, the Judicial Court of Paris ruled in two judgments (case IDs: 17/13838 and 17/13839) to split the proceedings. Therefore, the court will hear the validity and infringement proceedings separately from the FRAND issues. Splitting proceedings in this way is very unusual in France.

The NPE first approached Orange with a licence offer in 2015. After Orange failed to respond, in October 2017 the patent holder filed suits against it and Bouygues Télecom.

The defendant brought in DSL equipment manufacturers ECI Télécom, Infineon and Lantiq as third-party defendants. Huawei, Sagemcom, ZTE and Sercomm, equipment suppliers to Orange, also joined the suit as voluntary interveners.

The advisors

The list of representatives reads like a who’s who of French patent litigators. Intellectual Ventures relied on Bardehle partner Julien Fréneaux, who has experience representing NPEs. He also litigated for IPCom in the series of proceedings against Lenovo and Xiaomi.

In both cases, Fréneaux faced a renowned team from Hoyng ROKH Monegier Véron. The third-party defendants and interveners also assembled experienced teams of lawyers in the defence.

For Intellectual Ventures
Bardehle Pagenberg (Paris): Julien Fréneaux

Bouygues Télécom & Orange
Hoyng ROKH Monegier Véron (Paris): Denis Monegier du Sorbier, Sabine Agé

For SFR
Loyer & Abello (Paris): Michel Abello

For Broadcom
Bird & Bird (Paris) Anne-Charlotte Le Bihan

For Huawei
August & Debouzy (Paris): Grégoire Desrousseaux

For Alcatel
Allen & Overy (Paris): David Por

For Infineon Technologies
Jones Day (Paris): Thomas Bouvet

For Lantiq
Linklaters (Paris): Pauline Debré

For Sagemcom
Casalonga (Paris): Caroline Casalonga

For ZTE
Taliens (Paris): Jean-Frédéric Gaultier

For Sercomm
BRG (Paris): Richard Rondoux

Judicial Court of Paris, 3rd chamber, 1st section, Paris
Nathalie Sabotier (presiding judge)

4. IPCom against Xiaomi, Lenovo et al

IPCom fails in battle for 100A patent before the French courts

IPCom’s 100A patent, which concerns UMTS technology, expired in February 2020 ©vectorfusionart/ADOBE STOCK

IPCom’s famous 100A patent EP 1 841 268 B2 expired in February 2020. The NPE fought with various mobile communications companies until the very end – including in France. As recently as January 2020, the Judicial Court Paris dismissed the motions for preliminary injunction against Lenovo, Motorola, Xiaomi and various sales partners (case IDs: 19/60317 and 19/60318).

IPCom is in dispute with different mobile communications companies in several countries. The proceedings against Lenovo and Motorola attracted particular attention, because the two mobile phone manufacturers filed for an anti-suit injunction against IPCom in the US.

However, the NPE fought back. In 2019 the UK High Court, as well as the Judicial Court of Paris, granted an anti-anti-suit injunction against Lenovo (case ID: 19/59311).

In March 2020, the Paris Court of Appeal confirmed the judgment on the anti-anti-suit injunction in the second instance (case ID: 19/21426). The judges thus confirmed the jurisdiction of the French courts, and instructed appellants Lenovo and Motorola to withdraw their motion for an anti-suit injunction in the US.

Simultaneously, the Judicial Court of Paris also heard the motions for preliminary injunction against Lenovo and Motorola (case ID: 19/60318) as well as Xiaomi (case ID: 19/60317) and respective sales partners in France, Modelabs, Ihealthlabs and Retail 2.0. IPCom wanted to prohibit the defendants from continuing to sell the devices, which the NPE believed infringed its patent. In January 2020, the Judicial Court Paris dismissed IPCom’s motion for preliminary injunction. The court dismissed both cases on the grounds of disproportionality.

The advisors

In both cases, IPCom relied on Bardehle Pagenberg partner Julien Fréneaux, with whom it has a close relationship. Lenovo worked with two Hoyng ROKH Monegier Véron partners, Sabine Agé and Amandine Métier. Besides Lenovo, Agé also represented Motorola as well as importer Modelabs and distributor Digital River. Xiaomi relied on the IP team of full-service firm Duclos Thorne Mollet-Viéville, led by name partner Thierry Mollet-Viéville.

For IPCom (case IDs 19/60317 and 60318)
Bardehle Pagenberg (Paris): Julien Fréneaux

For Xiaomi (case ID: 19/60317)
Duclos Thorne Mollet-Viéville (Paris): Thierry Mollet-Viéville (public knowledge)

For Lenovo, Motorola, Digital River (case ID: 19/60318)
Hoyng ROKH Monegier Véron (Paris): Sabine Agé, Amandine Métier

For Modelabs
Hoyng ROKH Monegier Véron (Paris): Sabine Agé (case ID: 19/60318)
Cabinet Gontard (Paris): Raphaël Gontard (case ID: 19/60317) (public knowledge)

For Ihealthlabs (case-ID: 19/60317)
LPA-CGR (Paris): Prudence Cadio (public knowledge)

For Retail 2.0 (case-ID: 19/60317)
Cabinet Gontard (Paris): Raphaël Gontard (public knowledge)

Judicial Court Paris, Paris
Gilles Buffet (presiding judge)

5. Quadlogic against Enedis over smart meter technology

A case in point that not just pan-European patent battles are big in France

In France, Quadlogic and Enedis fought a hard battle over so-called Linky meters ©Goodpics/ADOBE STOCK

US manufacturer of energy management products Quadlogic, and French energy company Enedis, have fought over smart meter technology for years. In autumn, the Court of Appeal declared disputed patent EP 1 260 090 null and void. The decision followed a first-instance decision by the Judicial Court of Paris from 2017 (case ID: 16/03165).

Defendant Enedis is a subsidiary of French state-owned electricity company EDF. It supplies around 95% of French households with power. Since 2015, Enedis has used smart meters to measure its customers’ electricity consumption. According to an EU directive, more than 80% of European households were to be equipped with such meters by 2020. The French energy supplier purchases these electricity meters, known as Linky meters, from various manufacturers.

In 2016, Quadlogic filed a patent infringement action against Enedis at the Judicial Court of Paris. Quadlogic claimed that Enedis’s Linky meters infringed its patent EP 090. As such, Quadlogic demanded 350 million euros in provisional damages. During the saisie-contrefaçon that followed on Enedis’ premises, bailiffs seized measuring devices from manufacturer Itron and concentrators from manufacturer Maec.

However, the first instance judges declared the patent invalid, a decision which Quadlogic appealed. Then, in November 2020, the Paris Court of Appeal upheld the first-instance decision (case ID: 18/05313).

The advisors

Quadlogic worked with IP boutique Armengaud Guerlain from the beginning of the proceedings. Partner Catherine Mateu came on board on the recommendation of a US firm from the international network.

Enedis relied on a team from international firm Jones Day. Besides Enedis, numerous smart meter manufacturers with contracts with the electricity company for their product supply were involved. Louis de Gaulle, name partner of de Gaulle Fleurance, advised Maec, which is part of the Cahors Group. Reed Smith, Pinsent Masons and Duclos Thorne Mollet-Viéville advised other manufacturers, which unlike Maec were not co-defendants, in connection with the proceedings.

For Quadlogic
Armengaud Guerlain (Paris): Catherine Mateu; Guillaume Klasen

For Enedis
Jones Day (Paris): Emmanuel Baud, Philippe Marchiset

Court of Appeal, Paris, 1st chamber, Paris
Isabelle Douillet (presiding judge), Françoise Barutel-Naulleau, Deborah Bohee

6. Papst Licensing against Bosch and Peugeot

Automotive patent wars aren’t always about connected cars

In February 2020, the Paris Court of Appeal dismissed a suit brought by claimant Papst Licensing ©Zoran Zeremski/ADOBE STOCK

For six years, car manufacturer PSA fought with Papst Licensing over a diesel injector patent. In February 2020, the Court of Appeal dismissed the German NPE’s suit in the second instance.

Papst Licensing is the holder of the French part of EP 0 828 935, originally filed by Siemens. The NPE considers that diesel engines from Robert Bosch infringe EP 935. Bosch engines are installed in various Audi, BMW, Iveco, Mercedes Benz, Peugeot, Renault and Volvo cars.

Despite several months of discussion, Papst Licensing and Robert Bosch were unable to come to an agreement. As such, in October 2014 the NPE ordered a saisie-contrefaçon at a Société Mécanique Automobile de l’Est (SMAE) plant, which assembles the engines for Peugeot. Subsequently, Papst Licensing brought an infringement suit against Peugeot Citroen Automobiles, SMAE and Bosch before the Judicial Court of Paris (case ID: 14/16022).

The court dismissed the suit in March 2017, causing the claimant to appeal. The Court of Appeal upheld the first-instance ruling in February 2020 (case ID: 17/09829) (all public knowledge).

The advisors

For Papst Licensing
Duclos Thorne Mollet-Viéville (Paris): Thomas Cuche

For PSA and SMAE
August & Debouzy (Paris): Grégoire Desrousseaux (lead), Abdelaziz Khatab

For Robert Bosch
Bardehle Pagenberg (Paris): Julien Freneaux

Court of Appeal, Paris, 1st chamber, Paris
François Thomas (presiding judge), Isabelle Douillet, Françoise Barutel-Naulleau

7. Bayer against Ceva

Damages fight continues after EPO revoked the patent

The European Patent Office revoked a patent owned by German pharmaceutical company Bayer, which covers a medicine for piglets. But damage proceedings continue ©Countrypixel/ADOBE STOCK

Although the Technical Board of Appeal at the European Patent Office revoked a disputed Bayer patent in autumn 2020, the pan-European battle continues. In France and other markets, the parties continue to fight over costs and damages. Furthermore, Bayer has filed oppositions to some Ceva patents.

In 2019, Bayer accused Ceva of infringing European patent EP 21 64 496 across several European jurisdictions. The patent covers a veterinary medical preparation for farm animals, particularly for piglets.

On 17 September 2020, the EPO found a patent owned by German pharmaceutical company Bayer Intellectual Property, licensed to Bayer Animal Health, invalid for lack of inventive step. The Board of Appeal revoked the Bayer patent, overturning a first-instance decision from the EPO.

Pharmaceutical company Ceva Santé Animale then resumed sales of its veterinary preparation in some countries. Meanwhile, US animal pharmaceutical company Elanco purchased Bayer’s veterinary division. However, although the company was sold to Elanco, Bayer still owns the patent.

As such, proceedings commenced in many European jurisdictions. However, over the past year courts have handed down various national decisions, with no consistent approach. Bayer enforced preliminary injunctions in Belgium, Denmark, Greece, Hungary, Spain, Sweden and Germany.

In France Bayer failed to obtain a preliminary injunction that would have prevented Ceva from manufacturing and selling its drug. Other European courts which denied Bayer a preliminary injunction against Ceva include the Netherlands, Finland, Romania, Bulgaria and Portugal. Litigation is ongoing in the UK and Italy.

The advisors

International boutique Hoyng ROKH Monegier acted for Ceva in the dispute, led by Paris managing partner Benoît Strowel. The relationship between Hoyng ROKH and Ceva is relatively recent, with Strowel gaining Ceva as a client in 2017.

In the opposition proceedings, Hoyng ROKH Monegier also worked alongside patent attorney firm df-mp, which acted for Ceva Animal Health.

In France, Bayer counts on Allen & Overy, in a team led by Laetitia Bénard and Stephan van der Vlugt. The latter was previously in-house at Bayer and is now a lawyer at Allen & Overy in Düsseldorf. The firm cooperates with Sean Alexander of Elanco, the new owner of Bayer’s previous veterinary arm.

For Ceva
Hoyng ROKH Monegier Véron (Paris): Benoît Strowel (partner)

For Bayer
Allen & Overy (Paris): Laetitia Bénard; Charles Tuffreau

8. Gilead against Biogaran & Mylan

Court of Appeal declares Truvada SPC void

The French Court of Appeal in Paris is relying on CJEU case law to reject three SPCs for antibodies ©SciePro/ADOBE STOCK

For a long time, HIV drug Truvada – which combines active ingredients tenofovirdisoproxil and emtricitabine – was one of Gilead’s most economically important products. The originator fought hard across Europe for its property rights. As in other countries, Gilead failed to protect its blockbuster drug in France. In two separate decisions, the Paris Court of Appeal declared the supplementary protection certificate (SPC) void in January 2020 (case IDs: 18/15906 and 18/15928).

Basic patent EP 0 915 894 expired in July 2017 and covers only tenofovirdisoproxil. The SPC protected the combination of both ingredients. It was valid until August 2020.

Several generic companies launched invalidity proceedings against the SPC for Truvada in different countries. This is because the 1997 application for the basic patent made no explicit reference to emtricitabine as an effective treatment for HIV.

In 2018, the CJEU ruled that a preparation consisting of several active ingredients is protected if the claims of the basic patent relate to the combination of the active ingredients. This applies even if the basic patent does not expressly mention the active ingredients. A person skilled in the art must be able to identify both the combination of active substances, and each individual active substance (C‑121/17).

Subsequently, the UK High Court reversed the SPC in the UK (case ID: SPC/GB05/041). The Court of Appeal also upheld this at the second instance. The UK Supreme Court then dismissed an appeal by Gilead against the annulment decision in August 2020. In Germany, the Federal Court of Justice destroyed the SPC in the summer 2020.

In January 2020, the Paris Court of Appeal confirmed the cancellation of the SPC in two separate decision – one in the dispute Gilead against Biogaran, the other against Mylan – stating that “no functional formula was necessarily and specifically aimed at emtricitabine and that therefore the combination of the two products TD and emtricitabine could not be the subject of a SPC on the basis of the patent EP 894”. Thus, the Court of Appeal judges followed the first-instance decision.

The advisors

In France and Germany, Gilead relied on Hoyng ROKH Monegier. The firm has advised its client from the beginning of the proceedings.

For Gilead:
Hoyng ROKH Monegier Véron (Paris): Amandine Métier, Agathe Caillé

For Mylan (case ID: 18/15906)
Schertenleib Avocats (Paris): Denis Schertenleib

For Biogaran (case ID: 18/15928)
Casalonga (Paris): Arnaud Casalonga, Marianne Gabriel, Jean-Baptiste Lecoeur, Gérard Dossmann (patent attorney)

Court of Appeal, Paris, 2nd chamber, Paris
Anne-Marie Gaber (presiding judge), Laurence Lehmann, François Thomas

9. Generics against MSD

French courts have mixed view on EU regulation on SPCs 

Inegy is a drug used to lower total cholesterol and triglycerides in the blood ©Guido Grochowski/ADOBE STOCK

MSD is battling with various generic manufacturers in numerous countries over SPCs for cholesterol-lowering drug Inegy, with mixed success. With German courts already handing down various rulings in favour of generics manufacturers, in 2020 the originator suffered a number of defeats in France,

All patent disputes are based on national SPCs for basic patent EP 0 720 599. The SPCs protect the combination of ezetimib and simvastatin, on which MSD’s cholesterol-lowering drug Inegy is based. The SPC (FR05C0040) expired in mid-February 2020.

Shortly before this, MSD lost the case against Mylan (case ID: 19/06114) at the Court of Appeal with a motion for a preliminary injunction. The court found the SCP “possibly void”, after the Judicial Court previously declared it valid in a first-instance ruling. In addition, the Court of Appeal ordered MSD to pay back over 4 million euros, which Mylan paid to the originator following the first instance ruling.

In the dispute between Teva and MSD, in September 2020 the Court of Appeal ruled that the SPC is null on the basis of articles 3a and 3c of the EU Regulation n°469/2009 on SPCs (case ID: 18/23642). In doing so, the judges – as in the previous case against Mylan – also reversed the decision of the first instance court.

However, MSD achieved a small win in the case against Biogaran. Previously, the originator failed in the first and second instance with its motion for a preliminary injunction against the generic manufacturer. But in March 2020, in a pre-trial decision, the Judicial Court of Paris ordered Biogaran to produce confidential information relating to producers, distributors and importers of its products. It also had to show the amount and the prices of commercialised products (case ID: 17/17048).

Biogaran appealed this decision. In a ruling from 2 March 2021, the Court of Appeal overturned the order of the pre-trial judge from 2020. It rejected MSD’s claims for disclosure of confidential information by Biogaran. Such an admission of an appeal against a preliminary decision independently of a ruling on the merits is unusual. But the second instance judges found that the demanded information fell under the scope of trade secrets.

MSD appealed the decisions of the Court of Appeal in the cases against Mylan and Teva. Now these, as well as further cases against other generics companies, are pending before the Supreme Court. There is a possibility that the court will merge and thus hear the cases together.

The advisors

MSD relied on Allen & Overy partner Laetitia Bénard, who is known for pharma litigation, in all cases.

Mylan counted on Denis Schertenleib, who is regularly active in pharma litigation on the side of generic companies. Sandoz also worked with him. August Debouzy represented Teva in the dispute with MSD. Partners Grégoire Desrousseaux and Francois Pochart led the team, which has long advised its regular client in the French part of complex pan-European proceedings. This includes against Novartis in the dispute over the immunosuppressant everolimus.

Biogaran is a regular client for mixed firm Casalonga. Biogaran not only relies on the team’s litigators in such disputes like this one, but also hires its renowned patent attorneys for EPO filing and oppositions.

For MSD (all cases)
Allen & Overy (Paris): Laetitia Bénard

For Mylan (case ID 19/06114)
Schertenleib Avocats (Paris): Denis Schertenleib, Ombeline Degrèze-Péchade

For Teva: (case ID 18/23642)
August & Debouzy (Paris): Francois Pochart

For Biogaran (case ID 17/17048)
Casalonga (Paris): Marianne Gabriel

Court of Appeal, Paris, 2nd chamber (case ID: 18/23642 and 19/06114)
Anne-Marie Gaber (presiding judge), Laurence Lehmann, Françoise Barutel

Judicial Court Paris, 3rd chamber (case ID: 17/17048), Paris
Nathalie Sabotier (presiding judge)

10. Lufthansa against Thales

Contradictory decisions in battle over in-flight personal power supply

Findings in the dispute between Lufthansa and three defendants, Astronics, Safran Seats and Panasonic, have varied across European courts ©rh2010/ADOBE STOCK

In the pan-European dispute over a Lufthansa patent, French judges once again handed down rulings which differed from their colleagues in other countries. After the UK High Court found the patent valid and infringed in summer 2020, a few months later the Judicial Court Paris declared the French part of the same patent null and void (case-ID: 18/04501). In Germany, the proceedings are over.

EP 0 881 145 covers an invention that aims to provide safety to the passenger plugging in their device. It does this by detecting if a person has inserted a plug or foreign object. Safety precautions are necessary due to the high level of voltage the plug socket permits.

US aerospace company Astronics creates the same technology used for in-flight electronics plugs. Thales Avionics develops and produces in-flight entertainment systems for airlines. Japanese communications company Panasonic creates in-flight entertainment and installs power sockets as part of this remit.

In France, Lufthansa directed its lawsuit against Thales with Astronics and Panasonic as co-defendant.

To protect business secrets, the defendants requested that the proceedings not disclose some documents. The Judicial Court initially shelved this question and focused exclusively on the validity of the patent. The first-instance judges declared it invalid, due to lack of inventive step. Lufthansa appealed the decision. The case is now pending at the Paris Court of Appeal.

The advisors

Since the disputed patent has now expired, the main issue in both France and the UK is costs and damages. Lufthansa relied on US law firm Jones Day from the beginning of the proceedings. Gerd Jaekel brought the client to the firm from his time at Latham & Watkins in Hamburg in 2010. Thus, Jaekel was also involved in the German proceedings. London partner Alastair McCulloch conducted the proceedings in the UK, with Thomas Bouvet running litigation for Lufthansa in Paris.

Astronics and Panasonic also relied on Hogan Lovells in the UK and Germany. On the other hand, Thales was only a defendant in the French part of the international patent dispute. The company hired traditional Paris IP boutique Cousin & Associés, with whom it has a long-standing relationship.

For Lufthansa
Jones Day (Paris): Thomas Bouvet

For Thales
Cousin & Associés (Paris): Sandrine Bouvier-Ravon

For Astronics and Panasonic
Hogan Lovells (Paris): Stanislas Roux-Vaillard

Judicial Court, Paris, 3rd chamber, Paris
Florence Butin (presiding judge), Catherine Ostengo, Emilie Champs