Case Study:
EPO Opposition and Follow-up Litigation

Initial situation

Our client, a multinational corporation based in the US, was sued for patent infringement by a European competitor. The lawsuit was filed in the competitor's home country and our client was faced with the potential grant of a preliminary injunction against them in a commercially important market. Our client wanted to defend itself against the lawsuit and parallel to this try to have the competitor’s patent revoked. It was decided to oppose the patent at the EPO and in nullity actions in several key European jurisdictions. This resulted in an escalation of the dispute and further infringement suits in national courts.

Action taken

A team of chemical patent attorneys, including a native speaker from the country where the initial preliminary injunction suit was pending, was formed to handle this case. We were responsible for the EPO proceedings and for liaising with the local lawyers in the many countries where litigation was ongoing to ensure that the arguments presented in the various courts were consistent. In several countries where the litigation was handled by attorneys at law with no technical training, we provided support and advice on the technical aspects of the case.

Outcome

Although the preliminary injunction could not be avoided, it was lifted on appeal. In EPO proceedings, we managed to have the patent revoked, a decision which was subsequently confirmed by the EPO Boards of Appeal. The EPO opposition case was one of the fastest ever, as a result of HOFFMANN EITLE applying pressure to keep the case moving and the use of accelerated proceedings. The case was also remarkable in that the evidence obtained through discovery proceedings in a national court was released for use at the EPO before a decision on its relevance had been made in the national court. This is most unusual as discovery evidence is usually confidential.

Experts responsible for the project

Morten Garberg

Morten Garberg von HOFFMANN EITLE

M.Sc. (Chemistry), Irish, British and European Patent Attorney

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Thorsten Bausch

Thorsten Bausch von HOFFMANN EITLE

Dr. rer. nat., Dipl.-Chem., German and European Patent Attorney

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