Friday, October 25, 2019

French Court Overturns €25 Million Patent Damages Award

The case is Mermet v. Chavanoz Industrie.  Pierre Véron recently published a post on EPLaw, titled "The largest ever patent infringement damages award in Europe (€25,000,000) overturned on appeal; patent held invalid for lack of novelty because of a public prior use; no 'morning-after pill' available to erase it," with links to a more detailed analysis and copies of the decision in the original French and in English translation.  The decision, by the Cour d'appel de Lyon, does not address the methodology the trial court used for calculating the damages.  Rather, the appellate court finds the patent in suit invalid, based on evidence that the patent owner sold the patented product to another (the company that later became the infringement defendant, as it turned out) before the effective filing date, and that an after-the-fact confidentiality agreement between the parties could not erase the public disclosure of the invention.  U.S. patent lawyers should take note of two matters:  first, that in France and most other countries, there is no "grace period" analogous to U.S. Patent Act section 102(b) exempting the applicant's public use or sale of the invention before the filing date from the scope of the prior art; but second, that in other countries secret sales (like that at issue in the U.S. Supreme Court's recent Helsinn Healthcare decision) generally do not count as prior art.  The problem for the patent owner in the French decision is that the sales weren't secret when made.

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