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29 Nov 2021

Erasmus MC and Invivo v. Vitro et al., Court of Appeals of Barcelona, 8 April 2021, Appeal Docket No. 1969/2020

On 8 April 2021, the Court of Appeals of Barcelona rendered judgment on appeal in a complex case relating to nucleic acid amplification primers for PCR-based clonality studies, involving a number of issues regarding the assessment of inventive step, civil prejudiciality and compensation for damages.

On 6 June 2017, the Erasmus University Medical Center (“Erasmus”), along with the company Invivoscribe Technologies, Inc. (“Invivoscribe”), filed legal actions for both direct and contributory patent infringement against Vitro S.A. (“Vitro”) and Master Diagnóstica S.L. (subsequently taken over by Vitro), in relation to certain kits, manufactured and marketed by these companies, for performing
molecular studies linked to the detection of lymphomas, as well as to related reagents.

The plaintiffs invoked their rights, respectively as owner and exclusive licensee, to the Spanish parts of European patents EP 2460889 (“EP’889”) and EP 2418287 (“EP’287”). These patents claim sets of nucleic acid amplification primers for PCR-based clonality studies (respectively, of BCL2-IGH rearrangements and of the TCR-beta gene) and relate to methods of analysis for the early diagnosis of lymphoid cancer. Legal proceedings already initiated were subsequently joined to other proceedings prompted against Erasmus by a third party (anonymized in the Judgment, hereinafter referred to as “X”) seeking the invalidation of EP’287 for lack of inventive step.

The entire summary (in English) can be read here.
The judgment (in Spanish) can be read here.

Headnote: Luis Fernández-Novoa, HOYNG ROKH MONEGIER