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Sanofi v. Actavis (Germany)

Case No. 4a 0109/12 (2012)

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Sanofi v. Actavis (Germany)

Düsseldorf Regional Court
Case No. 4a 0109/12 (2012)

Facts

Sanofi (plaintiff) held a European patent on a drug to treat high blood pressure. The patent was granted in 1998 and had a term of 13 years. In addition, Sanofi obtained two supplementary protection certificates (SPCs)—one for the active ingredient irbesartan and the other for irbesartan in combination with another active ingredient, hydrochlorothiazide (HCT), thus extending protection for the drug beyond the 2011 expiration date of the patent. The irbesartan-only SPC expired in 2012. The combination SPC remained in effect until 2013. Prior to 2013, a competing company, Actavis (defendant), attempted to place generic versions of the drug on the market. Sanofi sought a preliminary injunction against Actavis on infringement grounds. Actavis countered by challenging the validity of the patent and arguing that the combination SPC failed to specify HCT by name, instead using the term “diuretic,” though the term was widely understood to mean HCT. After a proceeding in which the validity of the original patent was upheld, the case moved on to the Düsseldorf Regional Court for a ruling on the infringement issue.

Rule of Law

Issue

Holding and Reasoning (Crummenerl, Thomas, Von Hartz, J.J.)

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