Setterwalls successfully represented Orifarm Generics in patent dispute

Setterwalls has successfully represented Orifarm Generics in a patent dispute against Neurim Pharmaceuticals before the Patent and Market Court. In its decision rendered on 31 March 2020, the Patent and Market Court agreed with Orifarm and rejected Neurim’s request for a preliminary injunction.

Neurim Pharmaceuticals is the holder of a European patent concerning the use of the active ingredient melatonin in the treatment of certain sleep disorders. Neurim markets a melatonin product under the brand name Circadin. Neurim’s patent was granted by the European Patent Office in 2017, but revoked in November 2019 following opposition proceedings.

As Neurim has appealed the revocation decision to the Technical Board of Appeal of the European Patent Office, the revocation decision has been suspended and the patent remains in force in Sweden pending the appeal proceedings. In late 2019, following the revocation of Neurim’s patent, Orifarm Generics launched a melatonin product under the brand name Mecastrin on the Swedish market.

In January 2020, immediately upon appealing the revocation decision, Neurim sued Orifarm for alleged patent infringement and requested the Patent and Market Court to issue preliminary and final injunctions as well as a declaration of liability to pay damages. Orifarm contested the infringement allegations and countersued Neurim with a request for revocation of the Swedish portion of the patent on the ground that the alleged invention lacked novelty. Following an exhange between the parties of several pleadings and written expert opinions, the Patent and Market Court rendered its decision on Neurim’s request for a preliminary injunction on 31 March 2020.

Under normal circumstances, the Court would presume that the patent is valid and assess whether the alleged infringer had managed to rebut the presumption of validity. By reference to the suspended revocation decision, the Patent and Market Court stated that no such presumption of validity could be applied in a case like this. Instead, the burden was on Neurim to show that the patent probably will be upheld following the pending appeal proceedings. The Patent and Market Court decided that Neurim had failed to discharge this burden. Hence, the Court concluded that it was probable that the patent lacked novelty and would be invaliditated following the appeal proceedings. As a consequence, the Court denied Neurim’s request for a preliminary injunction, which means that Orifarm’s product can stay on the market.

Neurim may appeal the preliminary injunction decision to the Patent and Market Court of Appeal and the main infringement and revocation proceedings will be resumed before the first instance court.