Case number: C01148412 (PAC-2428/2012)
Court: The Chamber of Civil Cases of the Supreme Court of the Republic of Latvia
Parties: Irish company „Pfizer Ireland Pharmaceuticals” v. German company „ratiopharm GmbH”
Date: 6 November 2012
IP RIGHT(S) Patents
NORMS Arts. 25010(1), 25010(5) Latvian Civil Procedure Law.
On 3 August 2011 the Irish company „Pfizer Ireland Pharmaceuticals” submitted an application to the court (before any claim on the merits of the case had been brought to the court), requesting preliminary measures to be applied till the case is decided on its merits – a preliminary injunction to prohibit the defendant the use of a medicine „Sildenafil ratiopharm”, including offering the medicine for sale and selling it in Latvia, because it contained a substance protected by the claimant’s patent.
The Court had granted the preliminary injunction.
On 2 September 2011 the claimant Irish company „Pfizer Ireland Pharmaceuticals” brought a claim on the merits to the court for termination of the infringement of his patent rights.
Three months later the defendant German company „ratiopharm GmbH” brought a counterclaim to the court, requesting the patent to be declared invalid. Simultaneously the defendant submitted an application for revocation of the applied injunction.
The main question that the Court had to decide was whether a patent owner may be deprived of his rights to a provisional protection – to a preliminary injunction, while the patent is still in force and has not been declared invalid.
DAMAGES AWARDED -
The Court had already held in this case in its decision of 21 June 2012 [and likewise in other intellectual property cases – see the summary of the case No C04228412] that there are four questions to be considered in order to establish whether there are sufficient grounds for application of a preliminary injunction (or when an application for revocation of an applied injunction is submitted – whether there are sufficient grounds for keeping the injunction) (the so called four factor test):
- whether there are sufficient grounds to believe that the plaintiff is the intellectual property right holder;
- whether there are sufficient grounds to believe that the plaintiff’s intellectual property rights are being infringed or will be infringed;
- whether there are sufficient grounds to believe that the infringement causes or will cause irreparable harm to the plaintiff unless a preliminary injunction is applied;
- whether the balance of convenience favours the grant of the preliminary injunction.
In this case the Court explained that the first two preconditions included the necessity to consider whether there is a strong prima facie case. The Irish company „Pfizer Ireland Pharmaceuticals” owned the patent which was valid at that time. Therefore the Court agreed that the defendant, by selling the generic medicine on market, would infringe the claimant’s intellectual property right. However, the situation differs in the case where a counterclaim has been brought to the court requesting the patent to be declared invalid.
When considering the prima facie strength of the claimant’s case, the Court should be able to come to a belief that there is a good chance for the claim to be satisfied. As the counterclaim questions the patentability of the invention and requests the patent to be declared invalid, satisfaction of this counterclaim excludes satisfaction of the original infringement claim. Therefore, if there is a strong prima facie counterclaim, then there is no longer grounds to presume that there is a strong prima facie claim. For that reason the Court, when considering the grounds for application of a preliminary injunction, should examine not only the claim, separately from the counterclaim, but also the prima facie strength of the counterclaim that influences the prima facie strength of the original claim.
In the course of evaluation of the facts of the case, the Court came to the opinion that there was a strong prima facie counterclaim that excluded the prima facie strength of the original claim, and revoked the preliminary injunction that had been granted before the claim and the counterclaim on the merits had been brought to the court.
In this case the Court answered the question that had been unclear in the court practice before – whether a patent owner may be deprived of the rights to a preliminary injunction, while the patent is still in force and has not been declared invalid, if there a counterclaim brought to the court requesting the patent to be declared invalid. The Court held that such counterclaim might influence the amount of rights of the patent owner and that the abovementioned question had to be answered positively, if the submitted counterclaim was prima facie strong.