Court of Appeal of Paris, Decision of 27 October 2010, Johnson & Johnson Medical Limited, Johnson & Johnson Vision Care, Inc. and Ethicon v. Novartis AG

The Court of Appeal of Paris decided in an infringement action brought by Novartis AG relating to a patent for "extended wear ophthalmic lenses." The decision in particular confirms the long practice of French Courts with regard to sufficiency of description of patent claims, which tend to decide in favor of the patent owners.

Novartis AG is the owner of the European patent EP 0819258 B1 relating to "extended wear ophthalmic lenses." The patent mainly covers a contact lens made of a polymeric material formed from polymerizable materials comprising a specific composition. It was granted in 2001, revoked in an opposition proceeding in 2003 and maintained in its original form by the Technical Board of Appeal in its decision of 12 July 2007[1].

Novartis initiated proceedings against Johnson & Johnson Vision Care, Inc., Johnson & Johnson Medical Ltd. and Ethicon for the infringement of the French designation of its patent by marketing Johnson & Johnson's ophthalmic lenses under the name "Acuvue oasys with hydraclear plus", in particular in France, through its European subsidiaries, the UK company Johnson & Johnson Medical Ltd. and the French company Ethicon. Novartis claimed that Johnson & Johnson's contact lenses reproduced the characteristics covered by claim 1 of its patent.

The litigation was not limited to the French case but also took place in other jurisdictions. The Court of Jacksonville in Florida, USA, found the patent valid and Johnson & Johnson's lenses to be infringing. The German Federal Patent Court found the patent invalid for lack of novelty. The decision of the English Court of Appeal of 29 September 2010 confirmed the first instance decision of the High Court and revoked the patent for insufficiency of description.

In the case at issue, the Court of Appeal of Paris upheld the decision of the First Instance Court of Paris which had ordered a permanent injunction against Johnson & Johnson, holding Novartis' patent valid and infringed by Johnson & Johnson's contact lenses[2].

In particular, the Court of Appeal rejected all Johnson & Johnson's claims of insufficiency of description and lack of novelty, thereby taking an opposite view to the English Court of Appeal and German Federal Patent Court.

With regard to sufficiency of description, under article L. 614-12 of the French Intellectual Property Code, "a European patent may be revoked with effect for France on any one of the grounds set out in article 138 (1) of the Munich Convention [the European Patent Convention]." Article 138 (1) (b) of the European Patent Convention provides that the national designation of a European patent may only be revoked under the law of a contracting state "if the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art."

Consequently, in France, sufficiency of description, according to which a patented invention must allow a person skilled in the art to put the invention into practice, is a formal validity requirement of a European patent.

The decision of the Court of Appeal of Paris confirms the long practice of French Courts which tend to favor the patent owners, aiming to give the patent descriptions and claims a coherent and understandable scientific meaning despite any understanding difficulty or any gap in the explanation. As an example, in a distinct earlier case, the First Instance Court of Paris set aside the literal wording used in the patent and replaced it with the only technically coherent wording in order to properly scientifically construe the claim of the patent whose nullification was sought[3].

In the case at issue, Johnson & Johnson had argued that the ion permeability of the polymeric material of the contact lenses was of importance in the patent claims and therefore needed to be clearly quantified. In this respect, two formulas for calculation were disclosed in the patent but they led to different results due to the fact that the second formula described was actually erroneous.

Novartis did not contest what the court called a "blatant error." Nevertheless, instead of finding insufficiency of description, the court held that a person skilled in the art "had the basic scientific knowledge enabling him to rectify that error himself."

The Court of Appeal of Paris concluded that Novartis' European patent disclosed the invention in a manner sufficiently clear and complete and, thus, could be carried out by a person skilled in the art. Therefore, the court found Novartis' patent valid.