The
The case features a detailed look at the terms of the patent licence together with the renegotiation of that licence to include within its remit a further granted patent family. In the course of those negotiations the obligation to pay royalties was also "clarified".
The nature of the obligation to pay royalties had, it seems, been misunderstood by Boehringer since the start of the agreement (leading to the overpayment claim). Under the original agreement only the sale of product in a territory with a subsisting licensed claim covering the sale of product gave rise to an obligation to pay royalties (this was, by trial, common ground). The main dispute was whether the terms of the amended agreement and the nature of the renegotiation led to a different obligation to pay royalties from the date of amendment.
The judge found that indeed under the amended agreement the obligation was, subject to the patent law issues, to pay royalties on the manufacture of linagliptin in
The decision then takes a detailed look at German law relating to infringement of EPC 2000 claims - that is a purpose-limited product claim in the form "[linagliptin] for use in [...] alleviation of diabetes mellitus". The point at issue being whether the manufacture of an API (active pharmaceutical ingredient, in this case linagliptin) can infringe an EPC 2000 claim. This turns on whether the German law requirement for "sinnfällige Herrichtung" can be satisfied. The judge takes a historical tour through the development of this principle (for which he used the term "earmarking") and then applies it to the unusual circumstances of this case.
The result was the first finding that, under German law, API manufacture can infringe an EPC 2000 claim. Specifically that, at the time Boehringer manufactured the linagliptin, the requirement of sinnfällige Herrichtung was satisfied in relation to the specified purpose and thus there was an act of infringement.
A further EPC 2000 point was taken by Boehringer. They submitted that there can never be infringement by the manufacture of linagliptin products for export. However, following the
In summary, Boehringer was obliged to pay royalties on a worldwide sales basis under the amended agreement.
Footnote
1. [2021] EWHC 2692 (Pat) (dated
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
Mr
Marks & Clerk
90 Long Acre
WC2E 9RA
Tel: 2074200000
Fax: 207836339
E-mail: jalexander@marks-clerk.com
URL: www.marks-clerk.com
© Mondaq Ltd, 2021 - Tel. +44 (0)20 8544 8300 - http://www.mondaq.com, source