The dispute over a basic patent owned by medical technology manufacturer Brahms has taken a new turn. The Regional Courts Munich and Düsseldorf have suspended the pending infringement proceedings. Now everything hinges on a validity ruling from the Federal Court of Justice.
27 September 2019 by Konstanze Richter
The disputed patent EP 2 028 493 protects a test for the biomarker procalcitonin (PCT). This plays an important role in the diagnosis of infections, especially blood poisoning. For years, German medical device manufacturer Brahms, a subsidiary of the Thermo Fisher Group, has been involved in disputes with diagnostic equipment manufacturer Radiometer and Californian medical technology company Diazyme. The disputes not only concern EP 493 but also various process patents.
All infringement proceedings concerning EP 493 are suspended due to a decision of the Federal Patent Court in autumn 2018. The court ruled that the property right should be maintained to a limited extent (case IDs: 4 Ni 16/17 and 4 NI 22/17). All parties appealed against this judgment. Brahms appealed against the limitation, and the other parties appealed against the upholding of the patent.
In the parallel infringement proceedings in Munich, Brahms fought the US parent company of Diazyme, General Atomics, and its German distribution partners DiaSys and Orlalab (case ID: 21 O 16031/16). Brahms brought the second case against its competitor Radiometer (case ID: 21 O 17508/16) as well as a case against Diazyme in Düsseldorf (case ID: 4c O 60/16).
In all cases, Brahms had enforced the restricted IP right in the main suit, while also enforcing in an auxiliary request the original version granted by the European Patent Office. The limited claim was not found to be infringed by the Munich or Düsseldorf judges.
For the granted patent, however, the Regional Courts Munich and Düsseldorf found that infringement had taken place. Consequently both courts have suspended the proceedings until the Federal Court of Justice clarifies the validity of the patent.
The patent expires this October. Accordingly, the aim of the current proceedings is mainly to determine damages.
The dispute over EP 493 is part of a wider series of proceedings between Brahms, Radiometer and Diazyme. This is as well as the latter’s German distributors DiaSys and Orlalab. All patents concern the rapid diagnosis of the causes of infections.
In autumn 2018, the Federal Court of Justice destroyed the German part of the process patent EP 0 880 702 (case ID: X ZR 118/16) in the second instance. In the summer of 2019, however, the Federal Patent Court dismissed Radiometer’s nullity suit in a case involving another disputed patent (EP 2 301 626), thus upholding it (case ID: 3 Ni 16/17).
In a further nullity case, the Federal Patent Court revoked Brahms’ patent EP 2 084 545 B1 (case ID: 4 Ni 23/17) at the beginning of October on the grounds of inadmissible extension and lack of inventive step. The patent protects a method for the diagnosis of pneumonia in patients with associated heart failure, again using the biomarker PCT. At 7.5 million euros, the amount in dispute was unusually high for a patent for a diagnostic procedure. An appeal against the ruling is possible.
Another of Brahms’ patents was subject to a further oral hearing in a nullity suit in December (EP 2 293 078, case ID: 4 Ni 24/17). The hearing was also related to biomarker PCT and the Federal Patent Court ruled the patent void. The amount in dispute was set at €3.6 million.
All parties have relied on their advisors since the dispute began. Vossius has a long-standing relationship with Brahms and provides comprehensive advice to the company in patent proceedings.
Moreover, Maiwald regularly represents Radiometer in patent cases when these concern pharmaceutical and diagnostic patents.
Gleiss Lutz partner Matthias Sonntag has been working with Diazyme in patent cases for a long time. Stuttgart-based patent law firm, Witte Weller, brought Sonntag onboard for the current case. The company hired both law firms to fend off the lawsuit.
Infringement case (EP 2 028 493).
Vossius & Partner (Munich): Georg Rauh (lead), Thure Schubert, Christian-Leopold Zapp, Joachim Wachenfeld (patent attorney), Oswin Ridderbusch (patent attorney)
Maiwald (Munich): Marco Stief (lead), Heike Röder-Hitschke, Dirk Bühler (patent attorney)
Regional Court Düsseldorf, 4c Civil Chamber
Sabine Klepsch (presiding judge)
Regional Court Munich, 21st Civil Chamber
Tobias Pichlmaier (presiding judge)
Nullity case (EP 2 084 545 B1, case ID 4 Ni 23/17)
Vossius & Partner (Munich): Georg Rauh (lead), Joachim Wachenfeld, Oswin Ridderbusch (both patent attorneys)
Maiwald (Munich): Martin Huenges (lead), Dirk Bühler, Julia Mössinger (all patent attorneys).
German Federal Patent Court, 4th Senate (4 Ni 23/17)
This article was updated on 11/10/2019 and 16/12/2019 to reflect the latest developments in Germany.