Keeping up with Belgian patent litigation: Year case law review 2020

The Belgian cat is pricking her ears
to catch up on last year's patent cases

Still finding it difficult to keep up with an ever-changing world in the midst of a health, environmental, social and political crisis, while keeping up with patent law? Do not worry, the IPKat is continuing its series of "catch-ups" of the main European patent law jurisdictions. In this post, the Kat's friends in Belgium in the form of Philippe Campolini, Adélaïde Lonnoy, Joanna De Smedt, Louis Bidaine, Edouard Cruysmansreport of Stibbe on a recap of last year's patent cases in Belgium.

Over to Stibbe for their view from Belgium:

"Loyal IPKat readers followed with interest the half-year catch-ups of Dutch, French and German patent litigation. In this post, we will do the same for Belgium, but on a yearly basis, and report on a selection of interesting decisions rendered in 2020.

Although the overall number of decisions seems to be slightly lower in 2020 than in previous years, patent litigation has not been significantly affected by the measures taken against the Covid-19 pandemic in Belgium. The majority of hearings were held in person, though with attendance restricted to a minimum (often only the judges and the lawyers). This limited attendance was sometimes complemented by the possibility for clients and teams located abroad to follow the hearings remotely. As a result, one of the most significant changes of the last months in the practice of patent litigation was the need to learn how to plead a case wearing a face mask!

The issues addressed in the decisions discussed below are very diverse.

The first case is an SPC case in which the concept of “core inventive advance” was discussed in the context of a fixed-dose combination product. This case shows once again that the CJEU’s case law sometimes (often?) leaves more questions open that resolved.

The next two decisions were rendered in another pharma dispute, opposing Teva to several generic manufacturers of Teva’s best selling drug Copaxone. The decision rendered in the proceedings on the merits in this matter is of particular interest because of the fact that the Belgian court decided to declare the patent invoked by Teva invalid despite of an opposition division of the EPO having decided the opposite.

Leaving the pharma industry, the fourth decision was rendered in a patent case concerning a gun shot counter and contains some interesting considerations on sufficiency and on the concept of “offer” in the online context.

Finally, we will discuss a judgment handed down in a telecom case. Although this case prematurely came to an end, is nevertheless interesting because it revisited the thorny issue of the recovery of lawyers’ fees in Belgium after the United Video Properties v. Telenet judgment of the CJEU (C-57/15).

Dutch-speaking Enterprise Court of Brussel, 9 April 2020 and 25 February 2021, MSD Corp. v. Apotex NV, Mylan BV and Sandoz NV

After the CJEU introduced the concept of “core inventive advance” in its Actavis v. Sanofi ruling of 12 December 2013 (C-443/12), national courts had been left in the dark as to whether or not this constitutes a separate requirement under Articles 3(a) and 3(c) of Regulation (EC) No 469/2009. As for Article 3(a) of the Regulation (“the product is protected by a basic patent in force”), the air has been cleared by the Royalty Pharma ruling of 30 April 2020 (C‑650/17). In words that can hardly be misunderstood, the CJEU stated that in its Teva ruling of 25 July 2018 (C‑121/17) it had “clearly relied on an interpretation of Article 3(a) of Regulation No 469/2009, in the context of which the concept of ‘core inventive advance’ is not relevant”. For Article 3(a), “core inventive step” seems thus off the table.

Yet, in both Teva and Royal Pharma, the CJEU pronounced itself only on Article 3(a) of the Regulation. Some therefore argued that the concept of “core invehntive advance” could still be relevant in the context of Article 3(c) (“the product has not already been the subject of a certificate”).

In a Belgian case between MSD and Apotex, the Brussels Enterprise Court has been confronted with exactly that question. In particular, the court had to decide whether an SPC could be granted for the combination of ezetimibe and simvastatin, even though an SPC had already been granted for ezetimibe alone based on the same patent.

In its interlocutory decision of 9 April 2021, the Court ruled that it was clear that the requirement of Article 3(a) of the Regulation was satisfied, as none of the parties contested that the combination of ezetimibe and simvastatin is protected by the basic patent on which the SPC was based. The Court was of the opinion that the key question was whether Article 3(c) required the combination of active ingredients to be the subject of a “completely different invention” or to constitute a distinct “core inventive advance” in the basic patent. It therefore decided to wait its luck and see what the CJEU would do in the pending Royalty Pharma case.

The Royalty Pharma judgment of the CJEU was handed down a few weeks later and, contrary to the Court’s expectations, it did not clarify the situation with regard to Article 3(c). The Court (yet a different judge) then opted for circumventing the question altogether in its follow-up decision of 25 February 2021.

The Court confirmed that the conditions under Articles 3(a) and 3(c) require distinct assessments, yet it did not actually clarify what these distinct assessments would need to be and whether or not they actually require that the combination constitutes a “core inventive advance”. The Court did not answer these questions because it considered that in any case the combination of ezetimibe and simvastatin satisfied the requirement of “core inventive advance”. The Court based this conclusion on the findings that (i) the first judgment had already decided that “the combination of ezetimibe and simvastatin was protected by the basic patent” and that (ii) the parties agree that the patent claims a (first) invention relating to ezetimibe alone. From these findings, the Court inferred that the combination should necessarily be considered as a distinct and independent invention covered by the basic patent. Based on that reasoning, the Court deemed the other arguments developed by the parties irrelevant and confirmed that the SPC was validly granted.

Yet, when taking a closer look, it remains unclear how the Court’s assessment under Article 3(c) differs from its assessment under Article 3(a). Although the Court explicitly states that Articles 3(a) and 3(c) call for distinct assessments and that the fulfillment of the requirement of Article 3(c) cannot be inferred from the mere fact that the requirement of Article 3(a) would be fulfilled, the Court de facto applies the same test for both. It indeed concludes that the combination product was necessarily a second separate invention, based on (i) the test it had first applied to state that Article 3(a) was satisfied and (ii) the finding that the patent (also) claimed ezetimibe alone. This reasoning de facto seems to void the concept of “core inventive advance” of its substance. A more straightforward approach would have been to simply state that the concept is not relevant for the assessment of the requirement of Article 3(c).

In any case, this decision shows that both the CJEU and the Belgian courts still have some clearing up to do relating to the requirement of Article 3(c).

Court of Appeal of Brussel, 5 May 2020, Mylan BVBA v. Teva Pharmaceutical Industries Ltd and Teva Pharma Belgium NV

Teva is the exclusive licensee of EP 2 949 335 (“EP’335”), a European patent relating to a low frequency glatiramer acetate therapy owned by Yeda Research and Development Co. Ltd. On 9 March 2018, Teva launched PI proceedings against Mylan to obtain an injunction against Glatiramyl®, a generic product of Teva’s Copaxone®. The requested injunction was granted to Teva on 15 May 2018.

Mylan appealed that decision on 24 July 2018 and contested the admissibility of Teva’s claim based on the legal provision allowing an exclusive licensee to bring an infringement action (including for obtaining provisional measures) only if the owner (or usufructuary) of the patent at stake has not launched such an action itself after having been put on notice to do so by the licensee.

There was no discussion that such formal notice had not been sent to Yeda prior to the launch of the PI proceedings. However, based on the existence of parallel infringement proceedings launched by Teva in Germany, Teva argued that Yeda had implicitly agreed to the launch of the Belgian PI proceedings. The Brussels Court of Appeal rejected this argumentation by pointing out that the consent of the patent owner for the launch of proceedings in one country does not necessarily entail its consent for the launch of such proceedings in another country, and that in any case, the existence of proceedings in Germany cannot replace the formal notice to be sent to the patent owner. The appeal was thus declared well-founded and the injunction lifted.

This judgment is a useful reminder of the subordinate nature of the standing to sue of the exclusive licensee under Belgian law and of the importance to accomplish the formalities required by law before launching an infringement action in the absence of the patent owner.

Dutch-speaking Enterprise Court of Brussel, 28 April 2020, Synthon BV and Mylan BV v. Yeda Research & Development Co. Ltd

In parallel to the PI proceedings that have led to previous judgment, the validity of EP’335 had been challenged both in national nullity proceedings and before the EPO (contrary to other countries such as Germany, a nullity claim can be raised in Belgium pending opposition proceedings before the EPO). On 28 March 2019, the opposition division of the EPO decided to maintain EP’335 in an amended form. The opponents appealed that decision and this appeal was still pending when the Brussels Enterprise Court had to decide on the nullity action brought by Synthon and Mylan. Importantly, the decision of the OD had not been appealed by Yeda.

In the Belgian nullity proceedings, Yeda argued that the validity of EP’335 should be assessed on the basis of the patent as originally granted, as the decision of the OD was not final. Synthon and Mylan contested this view, based on the fact that Yeda had not appealed the decision of the OD, so that the board of appeal would in any case not be able to restore the patent as originally granted. The Enterprise Court agreed with Synthon and Mylan and decided to take EP’335 in its amended form as a basis for the assessment of the invalidity claim raised by Synthon and Mylan.

At this point, observers would probably have expected the court to follow the decision of the OD and to reject the invalidity claim to the extent it concerns EP’335 as already limited by the OD. This is however not what happened. The Belgian court granted the invalidity claim for reasons of both added matter and lack of inventiveness. In so doing, it completely disregarded the decision of the OD on both questions, and even considered that the OD decision was “inconsistent” to some extent.

This judgment shows that Belgian judges are not too much impressed (anymore?) by decisions rendered abroad (by national courts or by the EPO) and do not hesitate to decide on complex technical matters in full independence. And rightly so as the patent at stake was ultimately revoked in appeal by the EPO itself.

French-speaking Enterprise Court of Brussel, 18 December 2020, FN Herstal SA v. Secubit Ltd and Secubit Inc. Another decision worth mentioning was rendered by French-speaking Enterprise Court of Brussel in a case opposing the Belgian small arms manufacturer FN Herstal to Secubit, a manufacturer of gun shot counters based in Israel. FN Herstal, the holder of EP 1 881 292, a European patent relating to a “device for detecting and counting shots from an automatic or semi-automatic firearm”, considered that the shot counter commercialised by Secubit was infringing its patent rights. Secubit challenged the infringement and argued that the invention was not new, not inventive and insufficiently disclosed. This invalidity counterclaim was rejected by the Court, which considered the patent both valid and infringed.

On the invalidity side, the decision is interesting because it reminds of the need to base the assessment of an alleged insufficiency of disclosure on an interpretation of the patent claims that is reasonable and makes technical sense. The claim feature under discussion was the shot counter’s ability to “discriminate the type of ammunition used”. Secubit argued that the invention was insufficiently disclosed because the patent would not teach the skilled person how to obtain a shot counter that would be able to discriminate a specific type of ammunition against any other existing type of ammunition. The Court rejected that argument by considering that the skilled person would not interpret the aforementioned feature in such a strict way. According to the Court, the skilled person would understand that it is technically impossible (or at least very difficult) to discriminate between absolutely all existing types of ammunition, including those that only differ from each other by technically insignificant features. In its assessment, the Court also took the purpose of the invention into account, namely improving the maintenance of weapons. According to the Court, the skilled person would not expect the invention to discriminate between types of ammunition that do not wear out of the weapon differently. Based on the above and on the finding that the patent describes at least one way of carrying out the invention, namely by discriminating between blanks and live cartridges, the Court considered that the invention had been sufficiently disclosed.

On the infringement side, the decision is also interesting on the interpretation it gives of the concept of “offer” under patent law, including in its territorial dimension. The Court considers that while the mere publication of information relating to a patented invention does not constitute an infringing offer as such, even when this publication is made for profit-making purposes, such publication must be considered as an infringing offer when it creates the impression that the product can be delivered or purchased. Applying these principles to the case at hand, the Court considered that a website explicitly mentioning “Belgium” as one of the “selling locations” of the product presented on the website constitutes an offer of that product in Belgium. While this finding might seem obvious, the judgment goes a step further when assessing a previous version of the same website, on which no selling locations had been explicitly mentioned. Here, the Court first noted that this previous version of the website contained information enabling the commercialisation of the product, namely its features and advantages, and that it clearly aimed at an international public, by targeting all countries of the world without distinction, thus including Belgium. The Court added that the website clearly created the impression that the product at hand could be ordered from Belgium and that further information about the product could be sent to clients located in Belgium. The Court concluded that this previous version of the website, even if it did not explicitly refer to Belgium, had to be considered as an infringing offer in Belgium.

Court of Appeal of Brussel, 18 May 2020, Assia v. Proximus and Nokia Bell

Although this last decision is “only” about costs, it is of central interest for Belgian patent litigation. Since the United Video Properties judgment of the CJEU (C-57-15), there has been much debate around the question as to whether the Belgian system of “procedural indemnity” is compliant with Art. 14 of the Enforcement Directive, which obliges Member States to “ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party be, as a general rule, borne by the unsuccessful party, unless equity does not allow this”. Belgian law indeed provides for a flat-rate scheme setting out absolute reimbursement ceilings in respect of lawyers’ fees. Since 1 June 2021, the highest possible ceiling amounts to 39.000€, but only in cases where a claim “assessable in money” (i.e. a damage claim) is raised by a party for an amount higher than 1.000.000€. If the claims raised by the parties are not “assessable in money” (and as objectionable as this may seem, claims for injunctive relief and invalidity claims are considered “not assessable in money” under the Belgian system, irrespective of the commercial interests at stake), the absolute ceiling currently amounts to only 13.000€. This situation is what led the Antwerp Court of Appeal to request a preliminary ruling to the CJEU on Art. 14 of the Enforcement Directive in 2015.

In its United Video Properties v. Telenet judgment, the CJEU decided that Art. 14 of the Enforcement Directive precludes national legislation providing flat-rates which, owing to the maximum amounts that it contains being too low, do not ensure that, at the very least, a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party. Since this judgment, several attempts have been made to break the ceilings in cases where the costs incurred by the successful party were substantially higher than said ceilings. These attempts have however been unsuccessful to date.

In its judgment of 18 May 2020, the Brussels Court of Appeal examined this question again, this time in a patent infringement case which ended prematurely after the claimant had waived the proceedings. However, this waiver occurred at a moment where one of the defendants (Proximus) had already incurred significant costs for the preparation of its defense against the infringement claim and therefore sought the reimbursement of an amount (101.552,50€) well above the statutory ceiling (12.000€ at the time), arguing that said ceiling would be contrary to EU law and must be set aside.

The Brussels Court of Appeal dismissed that claim based on the fact that the Enforcement Directive has no direct effect between individuals and that there was no room for interpreting Belgian law in conformity with the Enforcement Directive, as a ceiling cannot be set aside by “interpretation”. The Court also considered that, by virtue of the separation of powers, it is not entitled determine alternative ceilings. Finally, the Court added that, in any event, Article 14 of the Enforcement Directive was not applicable to the case at hand because, as a result of the plaintiff’s waiver of the proceedings (which was made “without prejudice”), no losing party could be determined anyway. This last reason led the Court to dismiss the claim for reimbursement of costs of technical assistance (which are not limited by statutory ceilings) as well.

In practice, this decision confirms that, even in situations where the applicable statutory ceiling does not seem to “ensure that, at the very least, a significant and appropriate part of the reasonable costs incurred by the successful party are borne by the unsuccessful party”, and is thus not compliant with Article 14 of the Enforcement Directive, it remains difficult to obtain the recovery of the costs concerned. If this problem is not fixed, no doubt that the liability of the Belgian State itself will be raised at some point by an (unhappy?) successful party."