Insulet and Peterreins Schley win PI over insulin pumps at Düsseldorf Regional Court
Italian company Menarini Diagnostics may no longer sell its insulin pump GlucoMen Day Pump through Berlin Chemie, which is its subsidiary in Germany. Insulet recently enforced an injunction handed down by Düsseldorf Regional Court. However, this is certainly not the end of the dispute between the two medical device manufacturers.
21 March 2023 by Mathieu Klos
Insulet has recently obtained a preliminary injunction against Berlin Chemie in the first-instance Düsseldorf court (case ID: 4c O10/23). Berlin Chemie is a subsidiary of the Italian medical devices manufacturer Menarini Diagnostics, which markets various modern applications for people with diabetes under the GlucoMen brand.
Insulet achieves a victory
Menarini’s products include the GlucoMen Day Pump, a smart insulin infusion patch pump for managing diabetes. Patients can control the pump via a mobile phone, for example. However, according to JUVE Patent information, Korean company EOFLOW manufactures the devices.
Despite Berlin Chemie filing a protective letter (in German, ‘Schutzschrift’), the Düsseldorf Regional Court has now prohibited the company from further sales of its GlucoMen Day Pump in Germany. Insulet sells a corresponding competing product under the Omnipod brand, with the company maintaining that the GlucoMen Day Pump infringes EP 18 74 390. The patent protects a fluid delivery device.
Sales ban in Germany
According to JUVE Patent information, Insulet has since enforced the ruling, meaning that healthcare providers and patients cannot currently purchase the GlucoMen Day Pump in Germany. In November 2021, the German Federal Patent Court upheld the patent (case ID: 1 Ni 19/19 (EP)). An appeal is currently pending before the Federal Court of Justice.
Since the Düsseldorf Regional Court issued the preliminary injunction ex-parte, under German procedural law Berlin Chemie can now file an objection with the same chamber. If the court rejects the objection, Berlin Chemie can appeal to the city’s Higher Regional Court.
Given the strong competition in the market for insulin pumps, observers consider it certain that Berlin Chemie and Menarini will take this step. Menarini also markets the pump in other countries.
Insulet is still taking action against another manufacturer of medical devices for diabetes, the Metrum Group, based on EP 390 and other patents. The Higher Regional Court Düsseldorf is currently hearing an appeal against a preliminary injunction that first went in Insulet’s favour.
Marc Grunwald
Medical device expertise
Munich-based IP-firm Peterreins Schley has advised Insulet since 2019 – not only in patent litigation, but also extensively in patent prosecution at the European Patent Office.
However, Justin Hill, who was a partner in Olswang’s London office at the time, filed the patent-in-suit, EP 390. Hill then moved to become a partner at the London office of Dentons.
Peterreins Schley partner Marc Grunwald joined the firm last summer from Bird & Bird in Munich, where he had worked since 2011, becoming a partner in 2021.
Grunwald brought litigation experience in mobile communications and medical devices to Peterreins Schley. At Bird & Bird he previously worked for medical device manufacturer Edwards Lifesciences. Peterreins Schley also focuses on these two areas, with Insulet and Boston Scientific prominent clients.
Defendant Berlin Chemie relied on Grünecker in the PI proceeding, but changed advisors following its defeat. According to JUVE Patent information, Bird & Bird partner Christopher Maierhöfer has taken over the instruction.
For Insulet
Peterreins Schley (Munich): Marc Grunwald, Frank Peterreins (both partner); associate: Constanze Wedding
In-house (Massachusetts): Tom Anderson (Intellectual Property Counsel)
For Berlin Chemie
Grünecker (Munich): Ulrich Blumenröder (partner) (public knowledge)
Düsseldorf Regional Court, 4c Civil Chamber
Sabine Klepsch (presiding judge)
