Highlights
The District Court of The Hague again ruled in favor of Mundipharma in its ongoing patent dispute with Sandoz.
Mundipharma markets a successful painkiller under the trademark OxyContin®. This medicament is protected by several patents. Earlier, Mundipharma successfully initiated proceedings before the District Court of The Hague against the marketing of a generic of its medicament by Sandoz, and a number of other companies.
Pending these first proceedings, Sandoz started marketing a second generic variant of Mundipharma's painkiller. Also with respect to this product, Mundipharma initiated proceedings against Sandoz. The District Court recently ruled that also with this second generic variant product, Mundipharma’s patent rights are infringed.
In the decision the District Court broadly discusses the different arguments of Sandoz with which it asserts that the invoked patent would be invalid. The District Court declines these arguments and reaffirms the validity of the patent.
One of the arguments of Sandoz was that the claim of the patent would contain a so-called disclaimer (with which certain matter is excluded from protection), which could not be found in the patent application as filed. However, the District Court disagreed and ruled that there indeed was a basis for a disclaimer in the patent application as filed. In its ruling, the District Court broadly discussed the jurisprudence of the European Patent Office on this issue. Noteworthy is that the District Court – just as the courts in two instances in the United Kingdom – came to a different decision than the opposition division of the European Patent Office in the opposition proceedings which were initiated against the patent.
In order to end the infringement on the patent, the District Court issued an injunction against Sandoz to market its generic products in The Netherlands.
Mundipharma was assisted by Bart van den Broek and Willem Hoyng of Howrey Amsterdam.
Read the decision here.
Philips is victorious in a patent fight against SK Kassetten
The District Court of The Hague has ruled in favor of Philips in patent infringement proceedings instituted by Philips against the German CD-and DVD manufacturer SK Kassetten.
Philips owns several patents with respect to the CD- and DVD technology, and grants licenses under its patents to (among others) manufacturers of CD- and DVD discs. Philips had also offered a license to SK Kassetten, but SK Kassetten refused. Meanwhile, it did continue to infringe Philips’ patents on a large scale.
Philips subsequently instituted several proceedings in Germany and The Netherlands. In all of these proceedings it is now ruled in favor of Philips.
In a decision dated 17 March 2010, the Court of The Hague ruled that the discs of SK Kassetten fall under the scope of the patents, and that the patents were duly granted to Philips by the European Patent Office.
In an attempt to escape an injunction, SK Kassetten argued that Philips, by refusing a license to SK Kassetten under the conditions proposed by SK Kassetten, acted contrary to antitrust law. By doing so, Philips allegedly would not honor its obligation to grant a license under Fair Reasonable and Non Discriminatory conditions. Also this argument (the so-called FRAND-defence) was rejected by the Court.
According to the Court, a patentee in principle should be free to act against an infringer for as long as that party is not licensed. The right to enforce a patent would, according to the Court, not end until the third party has actually obtained a license. The Court found that another approach would among others run contrary to the legal certainty, as parties in absence of a license do not know if the entitlement to a license claimed by a third party is just, let alone what the license conditions would be in such a case.
It is interesting that by ruling so, the Court explicitly rejected the decision of the German Bundesgerichtshof (BGH) in the so-called Orange Book-case (BGH 6 May 2009). In short it follows from said decision that a patentee with a dominant position may not enforce its patent against a third party that (i) has unconditionally offered to take a license on conditions that cannot reasonably be rejected by the patentee, and (ii) already before the license agreement is concluded honors the obligations according to that offer (among which are the payment of the offered royalty and the obligation to report).
The Court of The Hague rules that such a doctrine does not fit the Dutch system, among others because it is contrary to the abovementioned legal certainty and is not necessary to protect the interests of the defendant. The Court furthermore added that even under the doctrine of the BGH, SK Kassetten would not be able to escape an injunction.
Philips was represented in this case by Bart van den Broek and Geert Theuws of Howrey Amsterdam.
Read the decision here.
Joris van Manen to Join Howrey’s Amsterdam Office
Noted Lawyer Will Add Additional Trademark, Copyright and Media Expertise
Amsterdam, November 23, 2009 - Howrey LLP is pleased to announce that, as of January 2010, Joris van Manen, currently a partner at the Dutch law firm of De Brauw Blackstone Westbroek, will be joining the firm’s Amsterdam office as a partner.
Mr. Van Manen’s considerable trademark, copyright and media practice will further strengthen Howrey's European trademark, copyright and media practices. He has acted on behalf of RTL in many cases regarding television programs, on behalf of De Lotto and for “copyright watchdog”, Brein, against The Pirate Bay.
At Howrey, Mr. van Manen will be reunited with former colleagues and friends, Willem Hoyng and Bart van den Broek, whom Van Manen knows well from their years at De Brauw.
Commenting on his move to Howrey, Mr. van Manen said, "This is a great opportunity for me. After 17 tremendous years at De Brauw, it is now time for a new challenge. Howrey offers me just that. Howrey's approach, strategy and practice fit very well with mine."
Howrey's managing partner, Robert Ruyak, echoed Mr. Van Manen, "We are delighted to welcome Joris to our firm. His skills and experience will help us strengthen our European trademark, copyright and media practice. He is a strong litigator, and fits very well into Howrey. He will be a great asset for our firm."
Howrey Wins Global Patent Law Firm of the Year Award for Fifth Year Running
Howrey LLP has been named global Patent Law Firm of the Year 2009 in the Who’s Who Legal Awards. This is the fifth time the firm has been recognised in this way, having won the award every year since its inception.
With the benefit of over eleven years of independent research, Who’s Who Legal used the thousands of nominations it has received from clients and private practice professionals to identify the leading firms and individuals in 30 practice areas, as well as the top firm in over 50 countries and five US states. The winners were formally announced in The International Who’s Who of Business Lawyers 2009, a compendium edition of all the individual Who’s Who Legal publications, which was released in May, covering 30 practice areas and over 100 countries.
Editor in chief Callum Campbell said, “In a highly competitive field, retaining the Who’s Who Legal Law Firm of the Year Award for Patent is an outstanding achievement. Howrey joins a select band of firms to dominate an area in this fashion. Its continuing success is reflected in the consistently positive feedback we received, recognising the firm’s exceptional individual and collective talent. We have no hesitation in once again declaring Howrey the leading firm in the world in this area”.
Partners from the firm received sufficient nominations from their clients and peers to be listed 15 times across seven countries in the Patent chapter of the publication.
Howrey LLP lawyers featuring in The International Who’s Who of Business Lawyers 2009
| First Name | Last Name | Office |
|---|---|---|
| Henry C | Bunsow | San Francisco |
| Marina | Cousté | Paris |
| Carl | De Meyer | Brussels |
| Joachim | Feldges | Munich |
| Cecilia H | Gonzalez | Washington |
| Mark | Hodgson | London |
| Willem A | Hoyng | Amsterdam |
| John F | Lynch | Houston |
| Denis | Monégier du Sorbier | Paris |
| Glenn W | Rhodes | Taipei |
| William C | Rooklidge | Irvine |
| Benoit | Strowel | Brussels |
| Bart J | van den Broek | Amsterdam |
| William K | West Jr | Washington |
| Richard | Willoughby | London |
Patent Firm of the Year.doc (917 KB)
Court of Appeal Amsterdam rules in favour of Studio Anthon Beeke
Studio Anthon Beeke has successfully appealed the judgment of the District Court Utrecht, in which its claims against Centraal Museum Utrecht were originally denied.
Centraal Museum asked Studio Anthon Beeke in 2005 to design the permanent exhibition of the “Dick Bruna huis”. When the project was almost finished, Mrs Terreehorst of Centraal Museum suddenly ended the cooperation with Studio Anthon Beeke. The intervention by the Court was necessary.
In first instance, the District Court Utrecht decided on the basis of certain correspondence between the parties that they had mutually agreed to terminate their cooperation. The Court of Appeal Amsterdam (co-located in Arnhem) did not agree with this assessment. Furthermore, the Court of Appeal determined that Studio Anthon Beeke had fully complied with its obligations towards Centraal Museum Utrecht.
Following this judgment, the new board of Centraal Museum has settled the dispute to the satisfaction of Studio Anthon Beeke. Their dispute is now ended.
Studio Anthon Beeke was represented in this case by Bart van den Broek en Geert Theuws of Howrey Amsterdam.
Read the verdict of the District Court and the verdict of the Court of Appeal here.
IATA wins preliminary injunction proceedings instituted by Travelport
The President of the District Court of Amsterdam ruled in favor of IATA in a case instituted against it by Travelport, for alleged infringement of its database rights.
Travelport operates an automated electronic reservation system for the booking of airline tickets, and reports data with respect to all tickets issued through its system to IATA. IATA uses a part of the reported ticket data for PaxIS, a market analysis product that – amongst other things –allows airlines to check their performance on certain flights. Travelport is of the opinion that by doing so, IATA infringes its database rights.
The President of the Amsterdam District Court, however, ruled differently. According to him, it could not be sufficiently established in the preliminary injunction proceedings that Travelport had made any substantial investments in its alleged database, nor that the Dutch Travelport entity had a risk-baring share in the alleged investments. Additionally, according to the President it could not be determined whether IATA infringes Travelport’s database rights (if any) by using the reported data at all. Travelport’s claims were therefore rejected in full.
IATA was assisted by Willem Hoyng, Frank Eijsvogels and Geert Theuws of Howrey Amsterdam.
Read the decision here.
The District Court of The Hague decides in the favor of Mundipharma
The Court of The Hague has decided in favor of Mundipharma in the ongoing patent battle against amongst others Ratiopharm and Sandoz.
Mundipharma markets a highly successful painkiller under the trademark OxyContin ®. This medicine is protected by several patents. Some time ago, Ratiopharm and Sandoz launched a generic of the patented product. Subsequently, Mundipharma instituted legal proceedings before the Court of The Hague, invoking two patents.
In a thoroughly motivated decision, the Court of The Hague decided that the generic painkillers marketed by Ratiopharm and Sandoz fall under the scope of protection of the patents. Moreover, the court held that the invoked claims were valid, in any case in so far as they covered the generics. Strikingly, in its substantiation of the infringement, the court deviated on some points from the earlier first instance decisions rendered by the German and English Courts, before which parallel proceedings were instituted.
After the decision, Mundipharma also requested an ex-parte injunction against one of the wholesalers of the generic products. Such ex-parte injunctions are not often granted in patent cases, but in this case the same patent and the same products on which the court had ruled already several days before were at issue. The ex-parte request was therefore granted.
Mundipharma was assisted by Bart van den Broek and Willem Hoyng of Howrey Amsterdam.
Read the decision (part 1) here.
Read the decision (part 2) here.