Facts
A. Company (the patent holder) is the owner of the European patent EP x, which protects a medicinal product for cancer treatment containing the active ingredient pemetrexed disodium and a methylmalonic acid lowering agent such as vitamin B12. B. AG (the plaintiff) intended to market a medicinal product with the active ingredients pemetrexed dipotassium, pemetrexed ditromethamine or pemetrexed diacid.
The Federal Patent Court found that the plaintiff did not infringe the patent, as the patent holder must adhere to the limitation of the patent to pemetrexed disodium in the grant procedure in good faith and therefore cannot claim protection against equivalents.
The appellants (A. Company and A. (Switzerland) SA) challenged this judgment. The Federal Supreme Court overturned the judgment and remanded the case for a new assessment.
Considerations
The Federal Supreme Court held that the mere limitation of a feature in the grant procedure does not automatically mean a waiver of protection against equivalents. Rather, it depends on whether the person skilled in the art can infer from the patent specification that the patent holder has excluded protection for equivalent embodiments.
In the present case, the patent holder limited the feature "pemetrexed disodium" to address the examiner's objections in the grant procedure. However, this cannot be interpreted as an exclusion of protection against equivalents. Rather, the description shows that the tumor-inhibiting active ingredient is the antifolate pemetrexed, which is deprotonated and…