Schnetzer on Third-Party Interests and Proportionality

As I noted on this blog a couple of months ago, there have been several commentaries recently on a July 2022 decision of the Düsseldorf Regional Court denying Gilead, maker of the hepatitis C drug Sofosbuvir, a stay of injunctive relief in a case brought by patent owner NuCana.  A new article by Karsten Schnetzer, titled Verhältnismäßigkeit und Schutz Dritter gem. § 139 Abs. 1 Satz 3 PatG—zum Urteil des LG Düsseldorf vom 7.7.2022—4 c O 18/21—Sofosbuvir (“Proportionality and Protection of Third Parties under Patent Act § 139 Para. 1 Sentence 3 PatG—on the Judgment of the Düsseldorf Regional Court of 7.7.2022—4 c O 18/21—Sofosbuvir”), Mitteilungen der deutschen Patentanwälten 3/2023, pp. 102-10, argues against the court’s holding that the relief afforded to third parties under the 2021 amendment to the German Patent Act is “subsidiary” to the compulsory licensing option under § 24.  Here is the abstract, in my translation from the German:

 In the course of the Second Patent Modernization Act (2. PatMoG), the claim for injunctive relief in § 139 Para. 1 Sentence 3 was supplemented in exceptional cases supplemented with the proportionality objection.  To the circumstances to be considered in assessing proportionality belong also the effects, which a successful claim for injunctive relief has on third parties.  The supplement was already hotly debated in the legislative proceedings in Parliament and in industry.  The Judgment of the Düsseldorf Regional Court of 7.7.2022—4 c O 18/21—Sofosbuvir appears to be the first trial court decision that expressly pulls together the legislative material with the proportionality of the claim for injunctive relief and with the aspect of hardship for third parties, and deals with the relationship between injunction and compulsory license claims.  The essay argues against the reasoning of the Regional Court.

The author argues that the court's holding that the provision at issue is "subsidiary" to the defendant's attempting to obtain a compulsory license, as well as its weighing of interests which effectively conditioned the availability of a stay for the benefit of third parties on the defendant’s attempt to obtain a voluntary license, contradicts the intent of the German Parliament as evidenced in the legislative record.