Patent Caselaw | Argentina | Aventis Pharma Liable for Patent Abuse
Earlier this year, the Civil and Commerce Federal Appeals Chamber, in Argentina, rejected an appeal filed by Aventis Pharma SA (Aventis) against a lower court’s ruling that admitted a suit for damages against it and found that Aventis had abused its patent rights by securing an injunction for the alleged infringement of its patent for “docetaxel trihydrate”, and ruled that it had to pay for damages in the amount of US$ 297,926.65, putting an end to a ligitation that streched over more than ten years.
Aventis merged into Sanofi-Synthélabo SA to form Sanofi-Aventis, now Sanofi S.A.
Aventis had filed for, and secured, an injunction enforcing its patent for “docetaxel trihydrate” against three local companies even though such companies were importing “docetaxel hemihydrate”, which the lower court found to be an abuse of its patent rights, especially considering that since Aventis was a world leading pharmaceutical, it seemed evident that it was aware of “the fine line separating its patented process from the anhydrous which was out of the scope of its protection, a circumstance that was inclined to cause unnecessary damages”. The three local companies granted damages were Laboratorios IMA SAIC (US$ 5,816.25), Compañía Erwital SA (US$ 98,400.95 plus US$ 70,000.00 for loss of profit) and Laboratorio Libra S.A. (US$ 123,709.45).
Laboratorios IMA was able to prove that it had imported “docetaxel hemihydrate”, which was out of the scope of Aventis’ patent for “docetaxel trihydrate”, and thus the lower court had found that such imports did not infringe upon the subject patent.
Both, Laboratorios IMA SAIC and Aventis, appealed the lower court’s ruling, with the former arguing that the court erred in its calculations regarding damages and the applicable interest rate thereof and failed to analyze its loss of profit allegations, and the latter arguing that not only had the court failed to follow objective guidelines for establishing damages, but also that the regular enforcement of one’s rights, such as those stemming form a patent, could not be deemed a wrongful act.
In its ruling issued on February 2, and while analyzing Aventis’ arguments, the Chamber made it clear that under both, the Argentinian Civil and Commercial Code and the TRIPS Agreement, an applicant or plaintiff would be found liable and ordered to pay a compensation for the damages caused by any provisional measures that end up being revoked, where there has been no infringement of threat of infringement of an intellectual property right. Furthermore, the Chamber emphasized that it had previously found Aventis liable for patent abuse on two different occasions, under similar circumstances, where it had tried to enforce patent rights for “docetaxel trihydrate” against imports of “docetaxel hemihydrate”, and at that time also found that “…it was clear that Aventis should know the existing differences between Docetaxel Trihydrate and Docetaxel Hemihydrate”, which made a generic injunction for the retention of any type of docetaxel an overreach of patent rights.
The Chamber also stated that, although enforcing rights do not amount to a wrongful act, just as Aventis argued, such an enforcement cannot take place where it caused damages to third parties and that no injunction could have a longer reach than the rights of the counterpart, so that if it goes against the purpose of the law or if it has been secured in bad faith, the applicant who filed for such an injunction should be held liable. It also noted that Aventis’ patent abuse had also resulted in the unjustified seizure of a drug that was to be used for the treatment of oncological patients and that such drug had gone to waste, since the conflict was not resolved before the corresponding expiration date, which made it clear that there had been a culpable unlawful act.
Finally, and upon analyzing both parties’ arguments about the incorrect determination of damages, the Chamber found that the lower court followed applicable guidelines, except when granting damages to Laboratorios IMA SAIC where it found that such company was entitled to an additional US$ 1,092.87.
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