Yesterday, the Dutch prime minister announced the Netherlands will be ‘locked down’ until mid-January. At the same time the author of this blog, part of a six member audience due to COVID restrictions, paid his last visit to the movies for many weeks to come. On the screen Tenet, a mishmash of Sci-Fi wannabe and James Bond. Its core ingredient: inversion. In between yawns, this concept reminded the author of the Dutch Court of Appeal’s inversion of the District Court’s decision in the pemetrexed case.

No, not really. The movie didn’t drop to the level that the mind wandered off to patent litigation. That would have been equivalent to a one star review (actually, literally, it’s three out of five). But, in retrospect and applying Tenet’s unintelligible philosophy, the Court of Appeal (‘CoA’) inverted the District Court’s almost – from a European-wide perspective – one-off pemetrexed decision.

No spoilers ahead, as it will be known by now that the CoA – end October – held that Fresenius with its pemetrexed diacid product infringed Eli Lilly’s patent claiming pemetrexed disodium. Not literally, but by equivalence. In doing so, the CoA seemed to have walked a middle ground between the UK and continental (equivalence) doctrines, possibly with a bit more footing on the latter.

So, as much has been spoiled already, let’s keep it to the observation that the CoA tried to – and, to add, quite clearly – set out the Dutch position on equivalence. Not to waste this space on a summary of main points of the CoA’s equivalence approach, let’s just refer to – detached from the facts of the case, and delving into the meat of the matter – paragraphs 4.1 – 4.11 of attached English translation of the CoA’s judgment (machine style, as a disclaimer to errors to be encountered; the original Dutch version can be found here).

What will be interesting to see is how – over the years to come – the Dutch courts will apply the CoA’s teaching. As always – and that’s the beauty of patent litigation – there will be rhythm, but will it move to the UK, the ‘continent’, or remain in some Dutch equivalence equilibrium? Or – in simple terms – will it be inverted, again?


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3 comments

  1. The decision of the District Court might have been a well be a one-off, but it was in my eyes totally justified in view of the behaviour of the applicant/proprietor during examination. He wanted a quick patent and made no attempts whatsoever to justify a broader scope than merely pemetrexed disodium.

    If it was so clear as courts all over Europe want us to believe that it could apply to any type of anion why did the then applicant not try to bring it forward? I guess he had not realised at the time as the only data related to disodium. He realised the potential much later when competitors went on the market.

    The only regret one can have, is that the examiner did not insist before grant to remove all the verbiage that was unrelated to the invention as actually claimed. This was the loophole used by the proprietor to inordinately increase the scope of what he had actually invented.

    The original description was extremely broad. Lots of considerations were purely speculative and went way beyond what had been actually invented, i.e. pemetrexed disodium.

    If there was a case to illustrate how equivalents could be handled in a reasonable way, it should have been quite a different one.

    What the UKSC delivered to get read of “Improver” should not be taken as example.
    The same applies to the decision CoA in The Netherlands. Good ideas but spoiled on an patent the description of which should have been much ore limited.

    In view of those decisions, good luck to any drafter of a FTO statement!
    Expect the unexpected and you might still be beyond anything reasonably thinkable.

  2. Readers, correct me if I see it wrong, but the way I see it is as follows:

    The NL court at first instance got it right. The English (expert) patent court and Court of Appeal got it right. But then the UK House of Lords put a higher priority on harmony with the rest of Europe and so reversed the expert patent judges of its own High Court and Court of Appeal.

    And now, Lo and Behold, the Court of Appeal in NL declines to be the “odd man out” and aligns with all the other courts.

    The whole pemetrexed thing reminds me of those famous sociology experiments in which the test subject is put in a group of stooges. Each member of the group is asked which of two straight lines, A and B, is the longer one. B is the longer one, plainly, but all the stooges say that they are sure that it is A.

    In about 80% of cases, the test subject allows him- (or her-) self to be persuaded that, indeed, the longer of the two lines is A.

    Hey Ho. But perhaps we should be thankful that national Supreme Courts put a higher priority on European “unity” than on the assessments of their own expert patent courts.

  3. Dear Max Drei,

    Nice to speak about European “unity”, although as far as the UKSC is concerned “unity” will end in a few days.

    Nothing against “unity”, but then please on something worth it. Not this patent.

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