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Austrian Court of Appeals confirms PI based on equivalent infringement of Eli Lilly’s Alimta®-Patent

In a decision of April 12th 2018, the Vienna Court of Appeals rejected an appeal against a preliminary injunction previously granted by the Vienna Commercial Court. The Court of Appeals confirmed that the offer or sale of a generic Pemetrexed product , which lists “Pemetrexed as Pemeterexeddiacid” as active ingredient, infringes the Austrian part of Eli Lilly’s patent EP 1 31 508 B1 (the Patent).

Claim 1 of the Patent, covering Eli Lilly’s product Alimta®, is worded as a swiss-type claim and refers to the use of pemetrexed disodium in a combination therapy together with vitamin B12 (or a pharmaceutical derivative thereof) for inhibiting tumor growth. In finding infringement by equivalence, the Court of Appeals applied the three-prong Bicalutamid-test, which is the standard for equivalent infringement under Austrian case law and directly corresponds to the German Schneidmesser-test. The outcome of the decision corresponds to recent Supreme Court decisions in the UK and Switzerland, equally finding for infringement of pemetrexed salt or acid variants under their respective national tests in line with Art. 69 EPC.

The Austrian Court of Appeals confirmed the first instance decision on all substantive points. The preliminary injunction was granted conditional upon a security deposit by the plaintiff. Moreover, this case may still be subject to further developments, as the decision stems from preliminary proceedings and will need to be confirmed in subsequent main proceedings. In addition, the decision may still be overturned by way of an extraordinary appeal to the Austrian Supreme Court, although the option for an ordinary appeal was denied, as the Court of Appeals found no questions unanswered by existing case law. The threshold for extraordinary appeals to the Supreme Court is high, as it must be shown that the decision depends on a legal question of material importance beyond the particular case at hand, for example because the Court of Appeals deviates from the case law of the Supreme Court or if such case law of is absent or inconsistent. Issues of equivalent patent infringement are rarely picked up by the Supreme Court, as they regularly hinge upon technical/chemical questions specific to a particular case.

A copy of the decision (in German) can be read here.

Headnote: Dominik Göbel and Manuel Wegrostek, Gassauer-Fleissner Rechtsanwälte