Preliminary injunctions in parallel patent infringement proceedings. Lessons to learn

IPKat friend Rodolfo Bretscher reported on the case of the Swiss Federal Patent Court 2018/004 dated 22 October 2018.

The Swiss case

In the case of ViiV v. Sandoz, the Swiss Federal Patent Court ruled in favor of a request for  a preliminary injunction, prohibiting Sandoz from marketing a generic version of ViiV's Kivexa in Switzerland. The case concerned the combination product of abacavir and lamivudine for the treatment of HIV, Swiss SPC C00817637/01, based on EP 081 637 B1. In its defense, Sandoz objected to the validity of the basic patent, but not to the question of infringement.  It contested the validity of ViiV’s patent on the basis that it was not entitled to the claimed priority date, arguing  lack of novelty (prior art WO 96/06844) and lack of inventive step in light of prior publications in the scientific field.

Taking into consideration that a previous ruling from the German Federal Patent Court on the same case reached a different conclusion, the Swiss Federal Patent Court found that it had to explain the discrepancy.  He reasoned that the discrepancy is justified on the basis of the different manner by which novelty is determined in Germany, and under the framework of the EPO case law, respectively.

 In the case law of the German Federal Patent Court, the novelty of selection invention is subject to a more strict examination than in that of the EPO. In particular, a citation from prior art is more prone to be novelty destroying than under the case law of the EPO Boards of Appeal. By contrast,  the Swiss court  follows the case law of the EPO(see EPO Guidelines for examination (Part V, Chapter VI Article 8.)

 Regarding examination of  inventive step, the Swiss court did not consider the citation referred to by Sandoz sufficient  to provide a motivation to the skilled person in the art to use abacavir as one of the two compounds for the treatment of HIV (the prior art referred to in this case was limited to the use of lamivudine and zidovudine).

What is interesting is that the court discusses the differences between the EPO and German caselaw in the field of the examination of selection patents, and  that the Swiss court treated the matter with considerable speed (the ruling came some three weeks after the oral hearing).

Preliminary injunctions in Switzerland or in Sweden? Same case but different

The Swedish ruling

This IPKat notes that the Swiss court refers to the ruling of the Swedish Patent and Market Court in the same case.  The reason why the court makes reference to the Swedish ruling is because this has been claimed by the defendant (Sandoz) in support of its defense for injunctive relief.

The ruling of the Swedish Patent and Market Court of Appeal (in the same case) (PMÖ 3565-17, ruling of the 26^th of June 2017) overturned the decision of  the Swedish Patent and Market Court,  which had previously granted Viiva a preliminary injunction. The ruling of the Court of Appeal was based on a preliminary examination of novelty and inventive step,  reaching the conclusion that  it is probable that the patent will be invalidated in the infringement proceedings.

The Swedish ruling includes an extensive review of the rules for determining whether the requirements for a preliminary injunction  were met,   and more specifically what is required  to base such a ruling upon  lack of inventive step and novelty of a granted patent. The Court of Appeal concluded that the patent holder failed to show that the patented invention (even after the changes proceeded by means of the post-grant delimitation of the patent claims), would survive a thorough examination of novelty and inventive step in the infringement proceedings. Unlike  the Swiss ruling, the Swedish Court of Appeal did not include an elaborate discussion on how these two patentability requirements are applied in Sweden (or for that matter how they are applied in other jurisdictions and in the EPO). The most important and most valuable contribution of the Swedish case lies with the pedagogic discussion on the requirements for the grant of a preliminary injunction, the burden of proof and how/when this may be shifted. Somehow the Swedish way of structuring a preliminary injunction ruling makes more sense and is more valuable in terms of understanding its legal and factual grounds.