During 2021, the Judicial Court of Paris alone issued a total of 121 judgments in patent law. JUVE Patent has summarised the ten most important decisions across all French instances in the past year, with interesting judgments on supplementary protection certificates, damages in pharmaceutical cases and the application of FRAND rules.
24 March 2022 by Konstanze Richter
The role of damages for blockbuster drugs in PI proceedings
An exciting topic in the French market in 2021 was how high courts can set damages in pharma cases. The market expects this year’s main trial between Eli Lilly and Zentiva to be hugely important. Furthermore, parties may gain further clarification.
Before January 2021, French courts were not known for awarding high damages for patent infringement in pharmaceutical cases. Until a few years ago, even involved parties considered getting an injunction difficult. Even now, it is anything but a foregone conclusion.
Eli Lilly and the Hogan Lovells team around Stanislas Roux-Vaillard were sure, then, to attract attention when the Paris Court of First Instance awarded Eli Lilly not only a preliminary injunction for pemetrexed, but a €4 million damages claim. However, in November 2021, the Paris Court of Appeal decided that Zentiva must not pay the €4 million in provisional damages. The court considered the damages issue as part of the merits hearing and not part of the PI proceedings.
Nevertheless, Eli Lilly did not lose, as the court upheld the preliminary injunction. It will be interesting to see how the court will rule on the damages issue in the merits hearing.
Opponent Zentiva relied on mixed IP firm Casalonga in the first instance. For the appeal, the company also hired Benjamin May from Aramis, who has experience advising Fresenius Kabi on the case. He is especially well-versed in preparing the part on damages.
Eli Lilly worked with Hogan Lovells in all jurisdictions for the pan-European dispute.
AARPI (Paris): Sylvie Kong Thong, Dominique Olivier
Aramis (Paris): Benjamin May
Casalonga (Paris): Arnaud Casalonga, Floriane Codevelle
For Eli Lilly
Lexavoué (Paris): Matthieu Boccon-Gibod
Hogan Lovells (Paris): Stanislas Roux-Vaillard (lead), Adrien Bonnet
Paris Court of Appeal (case ID: 185/2021)
Isabelle Douillet (president), Françoise Barutel, Déborah Bohée, Karine Abelkalon (court clerk)
Intellectual Ventures unsuccessful in large litigation series
The hearing between Intellectual Ventures and various telecommunications companies, heard at the Judicial Court of Paris, involved multiple parties at the Paris first-instance court. However, the NPE was unsuccessful. Shortly thereafter, the EPO revoked one of its central patents.
Intellectual Ventures accused various telecommunications companies of infringing a patent, which protects a multicarrier modulation system and method. The NPE filed suits against Orange and Bouygues Telecom, after making a licence offer.
The defendants brought in DSL equipment manufacturers ECI Telecom, Infineon and Lantiq as third-party defendants. Furthermore, Huawei, Sagemcom, ZTE and Sercomm, equipment suppliers to Orange, also joined the suit as voluntary co-litigants.
However, Intellectual Ventures did not prevail in the French first instance. Prior to this, the German lawsuits had also failed. In November, the EPO then revoked a central remaining patent in the German and French proceedings.
A mixed team from Bardehle Pagenberg represented Intellectual Ventures in all proceedings. In the EPO case, the party’s German and French core counsel worked hand in hand.
For Intellectual Ventures
Bardehle Pagenberg (Paris): Julien Fréneaux, Marie-Léa Rols, Clément Jaffray
Bouygues Télécom & Orange
Hoyng ROKH Monegier (Paris): Amandine Métier, Sophie Micallef, Sabine Agé; associates: Agathe Caillé, Annabelle Divoy, Charlotte Cuny
Loyer & Abello (Paris): Michel Abello, Guillaume Dubos
Bird & Bird (Paris) Anne-Charlotte Le Bihan
August & Debouzy (Paris): Grégoire Desrousseaux, Abdelaziz Khatab
For Infineon Technologies
Jones Day (Paris): Thomas Bouvet
Linklaters (Paris): Pauline Debré
Casalonga (Paris): Caroline Casalonga, Marianne Gabriel, Francis Zapalowicz (patent attorney), Pascaline Vincent
Taliens (Paris): Jean-Frédéric Gaultier
For ECI Telecom
Darkanian & Pfirsch (Paris): Augustin Pfirsch
Grünecker (Munich): Ulrich Blumenröder, Wolfgang Neubeck (patent attorney, Paris), Ute Stephani (all in German proceedings)
BRG (Paris): Richard Rondoux
Judicial Court of Paris, 3rd Chamber, 1st Section, Paris (case IDs: 17/13837, 17/13838 and 17/13839)
Nathalie Sabotier (presiding judge), Gilles Buffet, Alix Fleuriet
European Telecommunication Standards Institute plays a role in defending its members
What role does the European Telecommunication Standards Institute (ETSI) play in patent disputes between its members and third parties? Since French law governs ETSI’s rules of procedure, the Judicial Court in Paris is currently the venue for a precedent case concerning the standards body’s responsibility.
The ETSI rules of procedure are once again at the centre of a patent dispute between Philips and patent implementers. This is the third time a patent dispute has involved ETSI: last year, it involved TCI. Now Xiaomi and Thales have brought the standards body into their disputes with Philips.
It began in 2019, when TCI brought France-based ETSI into its pan-European dispute with Philips. The Chinese telecommunications manufacturer was responding to a pending case in the UK over Philips’ UMTS and LTE patent portfolio. TCL contested the UK court’s jurisdiction. It argued that, since ETSI is based near the French coastal town of Antibes, the French court should assume jurisdiction.
In February 2020, the Judicial Court in Paris declared its jurisdiction to hear FRAND-related disputes involving ETSI and its IPR rules. Regarding ETSI’s role in the patent dispute, the judge acknowledged a sufficient connection between TCL’s claims against ETSI on the one hand, and claims against Philips on the other. However, part of the main hearing on 2 June 2020 was to determine extent of ETSI’s involvement. But COVID-19 and the first lockdown stalled further proceedings.
At the end of 2020, TCL and Philips reached a settlement. But the question of ETSI’s responsibility remained unanswered.
A short while later, Xiaomi raised the issue again. This time, the European patent community experienced déja-vu. The dispute also concerned Philips’ UMTS and LTE patent portfolio, as well as the same arguments for ETSI’s involvement.
In a pre-trial decision, the Paris court declared its jurisdiction to rule on the case according to Article 8.1 of Brussels I. Here, the court suggested an alternative dispute resolution, for example through mediation with the support of the World Intellectual Property Office (WIPO). Both parties declined this suggestion.
Meanwhile, the market became aware that Thales’ dispute against Philips also concerns the same UMTS and LTE patent portfolio. Once again, ETSI is involved in proceedings.
While both Philips and ETSI relied on their regular counsel Hoyng ROKH Monegier and Amar Goussu Staub, market-leading boutique August Debouzy advised Xiaomi. Together with leading partner Grégoire Desrousseaux, young dual-qualified lawyer Abdelaziz Khatab appeared in court for the client.
Hoyng ROKH Monegier (Paris): Sabine Agé, associate: Annabelle Divoy
August & Debouzy (Paris): Abdelaziz Khatab, Grégoire Desrousseaux
Amar Goussu Staub (Paris): Cyrille Amar
Judicial Court, Paris, 3rd Chamber
Nathalie Sabotier (presiding judge), Elise Mellier, Arthur Courillon-Havy
PI proceedings concerning sequencing patent related to PCR tests
Patent owners often find it difficult to prevail in France with an application for a preliminary injunction. The Judicial Court of Paris has reinforced this impression in its ruling in the battle between Illumina and BGI/MGI.
Illumina, a US manufacturer of gene sequencing technology, is currently in dispute with Chinese competitor BGI and its subsidiary MGI Tech in numerous countries. Overall, the parties are disputing over five Illumina patents. All patents protect various technologies associated with DNA sequencing.
So far, Illumina has seen success in most parallel proceedings conducted in the UK, Germany, Belgium, Spain, Italy and Switzerland, among others. But the company is less successful in France. Here, the Judicial Court rejected the US company’s application for a preliminary injunction. Injunction proceedings in Paris concerned EP 15 30 578 and divisional patent EP 30 02 289, which cover modified nucleotides for polynucleotide sequencing.
MGI argued that the disputed technology was significant in combating Covid-19 in France. The plaintiff countered that other gene-sequencing technologies on the market did not infringe its patent. Illumina also argued that the injunction sought did not concern PCR tests. Therefore, the party said an argument for general interest was invalid in the present dispute.
However, the court ruled in favour of BGI/MGI, thus departing from the jurisprudence of other European courts. Florence Butin, who moved to the Court of Appeal in autumn 2021, which is senate responsible for IP matters, heard the case.
Illumina and Hoyng ROKH Monegier have worked together for a number of years. However, this is the first time the firm has acted for the US company in a court case. BGI/MGI relied on Allen & Overy in France and the UK.
Hoyng ROKH Monegier (Paris): Sabine Agé, Florence Jacquand; associates: Charlotte Cuny, Laurène Borey
Allen & Overy (Paris): David Por
Judicial Court of Paris
Florence Butin (presiding judge)
Everything on hold in the battle over MSD’s cholesterol-lowering drug Inegy
First, the Supreme Court must decide on the validity of the SPC for Inegy. Then, a long-running infringement battle over MSD’s cholesterol-lowering drug can continue. The Judicial Court of Paris concluded this in several parallel proceedings between patent holder MSD and multiple generics companies.
MSD has battled Mylan, Sandoz, Teva, Biogaran and EG Labo all over Europe. The parties are basing all patent disputes on the national SPC for basic patent EP 07 20 599. The SPC protects the combination of ezetimib and simvastatin, on which MSD bases its cholesterol-lowering drug Inegy.
Meanwhile, the SPC (FR05C0040) has expired. The disputes in France, therefore, focus mainly on the question of damages.
Whereas the Judicial Court of Paris had declared the SPC valid in some cases, the Court of Appeal ruled the patent invalid in all cases. MSD appealed the decisions of the second instance. Now these cases are pending before the Supreme Court.
As a result, the Judicial Court decided in early 2021 to suspend all further proceedings concerning damages until the Supreme Court decides on validity. Trade secrets also played a major role in the proceedings. In most cases, the judges ruled in favor of the defendants.
In all cases the parties relied on well-known advisors in pharma litigation. Allen & Overy partner Laetitia Bénard represented MSD, with both Mylan and Sandoz counting on Denis Schertenleib. Biogaran is a regular client for mixed firm Casalonga, while August & Debouzy represented Teva.
For MSD (all cases)
Allen & Overy (Paris): Laetitia Bénard
For Mylan (case ID 17/14664) and Sandoz (case ID 19/02893)
Schertenleib (Paris): Denis Schertenleib, Ombeline Degrèze-Péchade
For Biogaran (case ID 17/17048)
Casalonga (Paris): Marianne Gabriel
For EG Labo (19/02892)
BCTG Avocats (Paris): Gaëlle Bloret-Pucci
Judicial Court of Paris, 3rd Chamber
Nathalie Sabotier (presiding judge, case ID: 17/17048 )
Gilles Buffet (presiding judge, case ID: 17/14664)
Carine Gillet (presiding judge, case ID: 19/02893 an 19/02892)
The hard road to enforcing medical use patents, demonstrated via a chemotherapy drug
In a dispute between Sanofi and three generics companies, over a patent for the treatment of prostate cancer, the Judicial Court of Paris denied the patent holder preliminary injunctions due to lack of inventive step. The main proceedings against Accord and Evert Pharma are still pending.
Sanofi’s EP 24 93 466 lies at the centre of the infringement suits against generics manufacturers Teva, Accord Healthcare and Ever Pharma. The patent protects a novel antitumor use of cabazitaxel. In combination with prednisone or prednisolone, the drug forms the basis of chemotherapy drug Jevtana. Healthcare professionals use it to treat hormone-refractory metastatic prostate cancer, which was previously treated with docetaxel-based chemotherapy.
This is a ‘second medical use’ patent, which protects new possible uses of an existing drug. However, originators in Europe seldom submit second medical use patents due to difficulties in the practical enforcement of these patents.
Until now, European courts were sceptical about inventive step in the few infringement cases involving second medical use patents. The courts generally ruled in favour of the generic drug manufacturers, for example in a landmark UK decision in 2018 or in Germany in 2019.
And the French courts have not spared the current dispute over the Sanofi patent from such decisions. Once the EPO granted the use patent in February 2021, the twelve opponents immediately challenged the decision. These included French defendants Teva, Accord Healthcare and Ever Pharma. Initially, Sanofi had applied for a preliminary injunction at the Judicial Court of Paris, to prevent the parties marketing the generic products in France. However, the judges rejected the application in all three cases due to lack of inventive step.
In the case against Teva, Sanofi had appealed against the judgment, but later withdrew the appeal alongside the infringement action in the main proceedings. Thus, in France, the dispute is over for Teva.
Two main trials against Accord Healthcare and Ever Pharma on the infringement issue are still pending. Meanwhile, Accord Healthcare initiated a nullity action against EP 466 for lack of inventive step.
Herbert Smith Freehills partner Frédéric Chevallier was on Sanofi’s side in all three cases. The originator regularly relies on the firm in patent disputes in various countries. For example, the German team acted for Sanofi in the dispute against Ratiopharm over an SPC for Aubagio. The client relationship with Herbert Smith Freehills is not exclusive, however. In France, the originator also works with Hoyng ROKH Monegier or Linklaters.
August Debouzy has also advised Teva in patent disputes in the past, most recently in a dispute against MSD over SPCs.
Accord relied on its go-to law firm Pinsent Masons, with which it has a long-standing relationship. The firm’s IP teams are active across Europe for the generics manufacturer.
Ever Pharma instructed the small Paris-based IP boutique Szleper Henry for the first time. The two-partner team has acted for other pharmaceutical companies in the past, including originators such as Bayer and Hoffmann-La Roche.
Herbert Smith Freehills (Paris): Frédéric Chevallier
For Teva (case-ID: RG 21/53136)
August & Debouzy (Paris): François Pochart
For Accord Healthcare (case-ID: RG 21/53474)
Pinsent Masons (Paris): Emmanuel Gougé
For Ever Pharma (case-ID: RG 21/53849)
Szleper Henry (Paris): Guillaume Henry
Judicial Court Paris, 3rd Chamber
Nathalie Sabotier (presiding judge), Arnaud Faure (case ID: RG 21/53849)
Florence Butin (presiding judge, case ID: RG 21/53136)
Gilles Buffet (presiding judge, case ID: RG 21/53474)
A case demonstrating the opportunities and limits in patent infringement seizures
One of the most interesting machine patent disputes of the past year was between J.C. Bamford and Manitou. The dispute, some aspects of which the Supreme Court has already heard, concerns the extent to which patent infringement seizures can be carried out and how the parties use seized evidence.
In its February 2021 ruling (case IDs: 21/2112745), the Paris Court of Appeal annulled a seizure that J.C. Bamford had carried out at the defendant Manitou in 2017.
The judgment is based on a patent dispute between British manufacturer of construction and agricultural machinery, J.C. Bamford Excavators, and its French competitor Manitou. In parallel proceedings in the UK, France and Italy, the two competitors have fought over three J.C. Bamford patents since 2017.
In 2020, the Paris Court of Appeal declared it permissible for patent attorneys to assist a bailiff in seizing infringing property. This is even if those patent attorneys drafted the complaint or hearing on the patent in question.
J.C. Bamford switched counsel from Simmons & Simmons to a Hoyng ROKH Monegier team led by Sabine Agé and Caroline Levesque. The firm had already moved away from Simmons in parallel proceedings in other countries. For example, it switched to Hiroshi Sheraton at Baker & McKenzie after the retirement of London-based Simmons partner Rowan Freeland. In Italy, Laura Orlando, former partner at Simmons & Simmons’ Milan office, brought the client upon joining Herbert Smith Freehills in 2018.
For J.C. Bamford
Hoyng ROKH Monegier (Paris): Sabine Agé, Caroline Levesque, Lonni Bas
Simmons & Simmons (Paris): Marina Cousté, François Jonquères, associate: Mickaël Da Costa
Beau de Lomenie (Paris): Jacques Verrue, Didier Intes (both patent attorneys)
In-house (Rocester): Michael Hargreaves (legal counsel), Adrian Ross
Loyer & Abello (Paris): Michel Abello, Marie Liens, Jean-Baptiste Thibaud, Mickaël Jeuland (patent attorney), associate: Stephanie Rollin de Chambonas
Court of Appeal, Paris
French Supreme Court clarifies deadlines for reinstatement of a French patent application
If a patent applicant misses a deadline at the French patent office (INPI), they may restart their case. Following a ruling by the French Supreme Court, the office now calculates an applicable one-year time limit from a different cut-off date.
In effect, a patent applicant before the French Patent Office (INPI) now has more time to reinstate their case if they previously failed to meet a deadline. The Supreme Court ruling is a new interpretation of the one-year time limit for an action for restoration of rights to file a request for continuation of proceedings. Thus, the court is reconsidering the practice since its last ruling on this issue 35 years ago.
In addition to some legal motivations, the court also explicitly justified the ruling with the desire to establish uniformity with EPO case law.
Medical device manufacturer B.Braun Medical is the plaintiff appealing against a decision of the Director General of the French Patent Office (INPI). The case concerned a patent application for a urinary catheter. Braun relied on a team from August & Debouzy, with which it has worked for a long time.
August & Debouzy (Paris): Grégoire Desrousseaux, Abdelaziz Khatab Geoffroy Thill
Paris Supreme Court, Commercial Chamber (case ID: 20-10.875)
Sophie Darbois (presiding judge)
Bayer fails to achieve a preliminary injunction in France in the international dispute
In this highly-international SPC lawsuit, Bayer is trying to enforce its IP rights for sorafenib in over ten countries. In France, the German healthcare company was unsuccessful in the first instance in its quest for a preliminary injunction.
Bayer owns EP 11 40 840, which expired on 12 January 2020. The company had obtained a supplementary protection certificate (SPC) for this patent to compensate for the loss of effective protection for the period between the filing of the patent and the granting of marketing authorisation for the product covered by the patent. The INPI granted this SPC (no. 06C0034) in 2007. It expired on 21 July 2021.
In 2006, France approved related drug Nexavar to treat kidney and thyroid cancer. As an orphan drug for a specific type of thyroid cancer, it has market exclusivity until 27 May 2024. According to the judgment, the drug had global sales of €639 million in 2020. Competitor Teva received approval in 2018 to market the generic tablet sorafenib.
In Germany, Bayer is taking action against Teva subsidiary Ratiopharm. The Munich Regional Court prohibited Ratiopharm from marketing the product until 29 September 2021. In an initial notice to the parties, the Federal Patent Court said EP 225 could lack inventive step. Parallel to these proceedings, parties filed various lawsuits in Europe to prohibit and invalidate patent EP 255.
In France, the judges did not grant a preliminary injunction due to doubts about the inventive step. Both Bayer and Teva worked with their regular advisors in France.
Allen Overy (Paris): Laëtitia Bénard
August & Debouzy (Paris): François Pochart, Pierre-Olivier Ally, Asma Bendjaballah, Julia Cohen-Solal, Louise Millot
Tribunal judiciaire, Paris (case ID: 21/55930)
Nathalie Sabotier (presiding judge), Flore Marigny (clerk)
The pan-European patent dispute over coffee capsules heats up in the second round
French subsidiary of Jacobs Douwe Egberts (KDE) has sued Belgian manufacturer Belmoca and its French distribution subsidiary, Sodastream France. The case is also pending in numerous other European countries.
The case is reminiscent of the fierce dispute between Nespresso and ECC over aluminium capsules a few years ago. Now the manufacturers of aluminium capsules compatible with Nespresso machines are going to round two.
In the first instance, Belmoca averted a preliminary injunction in France. The main proceedings began with an infringement seizure (saisie-contrefaçon) brought by Douwe Egberts. Proceedings in the Netherlands are also pending.
Four oppositions against Douwe Egberts’ patent are pending before the EPO, while Belmoca and Nestec have filed oppositions. The French proceedings will continue as the EPO upheld one of the patents in amended form.
For Koninklijke Douwe Egberts
Gide (Paris): Raphaëlle Dequiré-Portier (lead), Julie Pailhès
Aramis (Paris): Benjamin May (lead), Louis Jestaz (counsel), Cécile Goy (associate)
Judicial Court, Paris
Co-author: Christina Schulze