EPLAW PATENT BLOG

NL – Merck Sharp & Dohme v. Sandoz

Posted: June 9th, 2010

Merck v Sandoz Merck Sharp & Dohme Corp. v. Sandoz B.V., the preliminary injunction judge of the District Court of The Hague, The Netherlands, 4 June 2010, Case No. 363158 / KG ZA 10-427

Merck claimed that Sandoz infringes its EP 752 and SPC 990041 for ‘ophthalmic compositions comprising combinations of a carbonic anhydrase inhibitor and a beta-adrenergic antagonist’ by marketing a dorzolamide/timolol-product (anti-glaucoma eye drops). The preliminary injunction judge rules that the fact that EP 752 (in amended form) was invalidated in parallel UK proceedings is in and of itself not sufficient for the judge in preliminary injunction proceedings to rule that there is a non-negligible chance that the (Dutch part of) the patent will be invalidated in proceedings on the merits. The Dutch judge must make up its own mind. However, the view of a respected fellow patent-judge in parallel proceedings on the merits will be given considerable weight. Merck also failed to explain or criticize the English verdict in any meaningful way, according to the preliminary injunction judge.

A point of interest was the discussion on whether or not the so-called Nardin-abstract was indeed to be considered prior art. Merck initially argued that the abstract was from a later date than the priority date (17 April 1991), but Sandoz obtained inter alia a statement from the British Library to the effect that the abstract had been received by the Library on April 11, 1991 and had been cataloged on April 16, 1991 ‘and would have been available for public use from that date’. The preliminary injunction judge refers to the Enlarged Board of Appeal T314/99 decision, in which it was held that a document “by its mere arrival in the archive [of a library; ed.] publicly available, since that did not mean it was as of that point in time cataloged or otherwise prepared for the public to acquire knowledge of it’. Since the Nardin-abstract had been cataloged the day before the priority date, the preliminary injunction judge therefore judged it to be prior art.

After reviewing the prior art (and especially the Nardin-abstract) the preliminary injunction judge came to the conclusion that there is a non-negligible chance that the Dutch part of the patent will be invalidated in proceedings on the merits. Therefore, the requested injunction was denied.

Read the judgment (in Dutch) here.

Head note: Maurits Westerik

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