The Federal Patent Court has upheld Coloplast's patent in Germany to a limited extent. The judgment is part of a dispute between medical device manufacturers Coloplast and Hollister over ready-to-use urinary catheter assemblies. The infringement suit will be heard in October 2019. The case concerns damages for the past ten years, as the patent expired in September 2017.
The Federal Patent Court initially heard the case in January. But, unusually for the court, it did not announce its decision until the end of May. The contested patent EP 1145729 for a urinary catheter has been partially maintained.
This is an interim victory for Coloplast. The Higher Regional Court Düsseldorf will announce its important decision in the German infringement proceedings on 10 October 2019.
Meanwhile, parallel proceedings are underway in France and the Netherlands. Both parties have been successful during the course of the dispute.
Courts suspended the proceedings for years pending a ruling on the validity of the patent. In September 2018, Coloplast won the first instance in the German infringement proceedings. Previously, the EPO had partially upheld the patent.
In the Netherlands, the patent was declared invalid. However, an appeal is pending. In France, the courts maintained the patent in accordance with the EPO decision, but an appeal is pending regarding infringement.
The so-called ready-to-use urinary catheters are primarily designed for those who require catheters on a regular basis. In comparison to other catheters, they are particularly suitable for use on the move as they do not require additional lubrication.
The packaging is designed in a way to ensure that the polymer-coated catheters are stored in a liquid. They therefore come pre-lubricated, which facilitates insertion into the urethra. The patent dispute concerns the packaging and design for storing the catheter in the liquid.
Miriam Kiefer, managing partner at Kather Augenstein in Düsseldorf, represents Coloplast in the case. Kiefer has a long-standing relationship with the company.
The contact to Jones Day partner Thomas Bouvet also came about via Miriam Kiefer. Bouvet handles the parallel French proceedings, while Mattie de Koning from Simmons & Simmons handles the proceedings in the Netherlands.
Jakob Pade Frederiksen, Danish patent attorney at Inspicos, is Coloplast’s core advisor. Following a recommendation from Kather Augenstein, Coloplast also brought Munich patent attorney Karl-Heinz Wohlfrom from Schmitt-Nilson Schraud Waibel Wohlfrom on board for the proceedings at the German Federal Patent court.
In addition, a dispute over another patent EP216064 of the same family was also pending in Spain. However, the parties have now dropped the dispute. Clifford Chance advised Coloplast in this instance.
Hogan Lovells represents Hollister throughout Europe, with the contact arising originally through the London office. In addition to IP proceedings, Hogan Lovells advises the US company on regulatory issues.
Kather Augenstein (Düsseldorf): Miriam Kiefer, Peter Kather, Jonas Block
Simmons & Simmons (Amsterdam): Mattie de Koning
Jones Day (Paris): Thomas Bouvet
Inspicos (Hørsholm): Jakob Pade Frederiksen (patent attorney)
Schmitt-Nilson Schraud Waibel Wohlfrom (Munich): Karl-Heinz Wohlfrom
In-house (Libertyville): Gregory Mayer
Hogan Lovells: Christian Stoll (Hamburg, lead), Klaas Bisschop (Amsterdam), Stanislas Roux-Vaillard (Paris), Anna-Katharina Friese, Benedikt Dellen (both Hamburg), Rik Zagers, Liselotte Cortenraad (both Amsterdam), Fanny Cony (Paris)
Hoiberg (Aarhus): Claus Elmeros (patent attorney)
German Federal Patent Court, 4th Senate (4 Ni 50/17 (EP))
Rainer Engels, Ingrid Kopacek, Werner Veit, Blanka Zimmerer, Johannes Freudenreich
Higher Regional Court Düsseldorf, 15th Civil Senate (I-15U67/17 and I-15U65/17)
Ulrike Voß (presiding judge)
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