Brief report on the main hearing in O2013_009 — “Drospirenone”

Case No. O2013_009 ¦ Main Hearing of 09 December 2014

ContraceptiveThe FPC has already issued a landmark decision Drospirenone in summary proceedings last year. Drospirenone is a compound used in contraceptives (birth control pills). This first decision S2013_001 mainly dealt with the doctrine of equivalents; please refer to the earlier post for all the technical matters that are at stake.

Later on, a procedural decision on the non-consideration of a late filed subsidiary request has been issued.

In a nutshell, infringement of EP 1 149 840 B2 is at stake. It is to be decided whether dehydration in the presence of pyridine/water as the replacing feature is an equivalent to p-toluenesulfonic acid (which is the claimed feature).

I have attended the main hearing yesterday. The parties had already been provided with the preliminary written assessment of a technically qualified judge. This assessment held that the use of pyridine/water infringes the claim under the doctrine of equivalents, in confirmation of the outcome of the summary proceeding S2013_001. The parties referred to sections of this written assessment at page numbers > 30; it is thus reasonable to assume that it already contains an exhaustive discussion of the technical matter at stake.

Thus, it was an uphill struggle for the defendant in the hearing, but it was fought well. The defendant pointed to alleged inconsistencies in the chain of arguments of the written assessment, and I have heard prima facie convincing arguments of both parties. I am keen to read the final decision, to cross-check whether and how yesterday’s hearing changes any of the conclusions of the preliminary assessment. But the parties finally entered into non-public settlement negotiations and it remains to be seen if a final decision will be issued.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. O2013_009 ¦ Main Hearing of 09 December 2014

Composition of the Board of the FPC:

  • Dr. Dieter BRÄNDLE (President; Judge)
  • Dr. Tobias BREMI (Reporting Judge)
  • Dr. Erich WÄCKERLIN (Judge)
  • Dr. Roland DUX (Judge)
  • Dr. Thomas LEGLER (Judge)

Representative(s) of Plaintiff:

  • Dr. Simon HOLZER (MLL)
  • Gregor S. KÖNIG (KSVR), assisting in patent matters

Representative(s) of Defendant:

  • Dr. Christoph WILLI (Streichenberg)
  • Dr. Rainer FRIEDRICH (df-mp), assisting in patent matters
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