Lavoix wins for Peaccel and University of Nantes at Paris Court of Appeal

EP 1 761 879 covers a method for calculating protein sequences. The patent holder is Codexis Mayflower, a subsidiary of US company Codexis. It specialises in biotechnologies and, in particular, the use of synthetic chemistry. The US company provides enzyme optimisation services and biocatalyst products for use in industrial processes in the pharmaceutical and related markets. Codexis has been in a long-running dispute with Peaccel and a researcher from the University of Nantes.

In spring 2015, Codexis became aware of a tool for protein sequence prediction offered by Bernard Offmann, university professor at the School of Science and Technology of the University of Nantes. According to Codexis, this tool had the same features as the technology protected by EP 879. The company also argued the tool was based on the same mathematical formula.

Peaccel not excluded

Codexis filed a suit against Bernard Offmann and Peaccel at the Tribunal Judiciaire in Paris (case ID: 15/10224). The latter specialises in protein engineering and design, and synthetic biology, with Offmann its vice president for research. Peaccel had linked to the university professor’s online tool on its company website.

After a seizure operation (saisie contrefaçon) to secure evidence from Offmann in May 2015, he deactivated the tool. Then, Peaccel applied to be released from the action, claiming no responsibility for the object of the suit. The court dismissed the application on the grounds that Peaccel had presented itself as co-developer of the tool on its company website. Furthermore, the court also found it had provided a link to Bernard Offmann’s site.

As such, the first instance court dismissed the infringement suit in April 2018 but found EP 879 valid. Codexis appealed against the ruling.
The Court of Appeal has now upheld the decision of the Tribunal Judiciaire as, according to the judges, Bernard Offmann’s tool does not reproduce the claims filed in the patent. The court also did not accept the argument of infringement by equivalents. As the university professor deactivated his tool immediately after the seizure operation, the payments imposed by the court on Codexis are relatively small.

A continuation of the dispute before the Supreme Court (Cour de Cassation) is possible.

Joint effort

Camille Pecnard

Mixed firm Lavoix was active for Peaccel and Bernard Offmann from the beginning. At the time of the first-instance proceedings, the firm was still divided into two branches: a law firm and a patent attorney firm. In France, it has only been possible for a few years for lawyers and patent attorneys to work together in mixed teams and integrated law firms.

However, even then both groups worked in cooperation, advising and litigating for the two clients.

Patent attorney Olivier Rocher advised on technical aspects from the beginning. Initially, former Lavoix partner and litigator Grégoire Goussu represented both clients in court. Goussu set up his own firm Amar Goussu Staub at the beginning of 2017 with two other partners from the Lavoix team.

Litigator Camille Pecnard, who had just joined from Hogan Lovells, thus took over the legal representation.

Céline Bey

Codexis has also relied on Gowling partner Céline Bey since the start of the proceedings, when she was still working at Herbert Smith Freehills’ Paris office. Bey then took the case with her when she moved to Gowling in early 2017.

Beau de Lomenie’s patent attorneys worked on the seizure operation. For the second-instance proceedings, Céline Bey brought in the law firm Regnier Bequet Moisan, which specialises in appeal procedures, for procedural matters.

For Peaccel/Bernard Offmann (University of Nantes)
Lavoix (Paris): Camille Pecnard; Olivier Rocher, Béatrice Holtz (both patent attorneys); associate: Martin Simonnet

For Codexis
Gowling (Paris): Céline Bey; associate: Clémence Lapôtre
Beau de Lomenie (Paris): François Delumeau, Marc Nevant (patent attorneys) (public knowledge)
Regnier Bequet Moisan (Paris): Bruno Regnier (attorney specialised on appeal procedures) (public knowledge)

Court of Appeal Paris, 2nd chamber, 5th division
Brigitte Chokron (presiding judge), Laurence Lehmann, Agnès Marcade