SUGEN and PHARMACIA & UPJOHN COMPANY won infringement case in IP Court against NATIVA

On June 17, 2022 the Commercial Court of Moscow city revised its previous decision in the case of Sugen LLC and Pharmacia & Upjohn Company LLC against OOO Nativa, satisfying in part Claimants’ demands to cease the infringement and marketing of Sunitinib-native medicine.

Both claimants, being subsidiaries of Pfizer company group, co-own Eurasian patent 005996. In 2017, they filed patent infringement lawsuit against OOO Nativa, a pharmaceutical company from Moscow. Nativa did not deny the use of ’996 patent; however, raised a counterclaim based on its own Russian patent RU 2567535 granted in 2015, which Nativa considered to be dependent on EA 005996, and therefore, requested a Compulsory license.

Due to this fact, the court eventually dismissed the lawsuit in February 2019, while satisfying the counterclaim and awarding the first compulsory license in Russia. This decision was upheld in May 2019 by the Ninth Court of Appeals and in October 2019 by the IP Court of Russia.

According to the Civil Code of the Russian Federation, a patent cannot be invalidated directly at court during infringement litigation. Invalidity action can be requested by submitting opposition at The Chamber for Patent Disputes, which is the administrative board of ROSPATENT. In June 2021, the Chamber found the RU 2567535 patent to be not compliant with patentability criteria and canceled it in whole. This decision, approved by RU PTO, was appealed in the IP Court, which dismissed the suit in June 2021, and confirmed the patent to be invalid. A patent invalidation voids all national patent rights (including legal defense rights) as of the filing date.

This fact allowed the Claimants to file a plea for a revision of the case due to the new circumstances.

In March 2022, the Moscow Commercial Court reversed the initial decision, arranging for a re-trial. During the subsequent hearings, the Court found the Defendant’s actions to introduce Sunitinib-native medicine into circulation, including its official registration, to be in violation of the Claimants’ exclusive rights to EA 005996 patent and ruled to satisfy the claims in part. The Defendant was forbidden to produce, market, sell or otherwise introduce any Sunitinib-native medicine into civil circulation in Russia until August 31, 2022, when EA 005996 expires in Russia.

https://kad.arbitr.ru/Card/3a0440d1-5ba5-4049-ac4c-7be5b9edc09c