Novartis v Johnson and Johnson (February 2009)

The dispute between Novartis and Johnson & Johnson regarding extended wear contact lenses has recently been heard by the Hague District Court.

Novartis holds the European Patent EP 0 819 258 (‘EP 258’), relating to an ophthalmic lens for prolonged use (extended wear ophtalmic lens). EP 258 relates to ophthalmic lenses, i.e. lenses that are suitable for wearing on the eye without causing significant damage to the eye tissue and ocular fluids. The patent was granted for the Netherlands on the basis of a patent application filed on 22 March 1996, claiming priority from 4 April 1995 on the basis of the European application EP 9 581 0221, from 19 May 1995 on the basis of the Swiss application CH 149695, and from 8 December 1995 on the basis of the American application US 569816. The grant of the patent was published on 12 September 2001.

The grant of EP 258 was opposed by Johnson & Johnson. By a decision of 17 September 2003, the Opposition Division fully revoked EP 258. Novartis appealed against this decision. By a decision of 12 July 2007, the Technical Board of Appeal maintained the patent as granted unchanged.

Under the name ‘ACUVUE OASYS with HYDRA CLEAR Plus’, Johnson & Johnson put contact lenses on the market (including the Dutch market) that can be worn for a long period of time (‘Acuvue Oasys lenses’).

The dispute heard by the Hague District Court involved Novartis seeking an injunction against Johnson & Johnson on the basis of their infringement of EP 258 and also a finding to the effect that Johnson & Johnson had infringed EP 258 in the Netherlands.

Johnson & Johnson subsequently argued that there was no infringement and that claim 1 of EP 258 was not new, not inventive and irreproducible and that the patent was therefore invalid in its entirety. Johnson & Johnson also counterclaimed against Novartis and sought revocation of the entire Dutch part of EP 258.

The court subsequently upheld the EP 258 patent and granted an injunction against Johnson & Johnson to block further sales in the Netherlands of its Acuvue Oasys product.

The decision, which has just been translated into English, is useful as it deals with almost all aspects of patent law: priority, clarity and sufficiency, novelty, inventive step and infringement

Parallel proceedings are pending in the UK and in Germany, but have not yet come to hearings.

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