Freedom to Operate for Puritan: Irrevocable Withdrawal of Inspection Proceedings by Copan
Copan’s attack was blown away by the District Court Düsseldorf. At an oral hearing on June 24, 2014 (case no. 4b 176/12), the Court made clear that Puritan’s HydraFlock® and PurFlock Ultra® flocked swab products are flocked differently and do not have Copan’s claimed fiber arrangement.
In addition, the Düsseldorf Court, often considered the most important European court for enforcement of patent rights, ordered Copan to reimburse Puritan for all attorney fees incurred under applicable German law with respect to the inspection proceedings Copan brought against Puritan.
The Details
Copan Italia S.p.A. started inspection proceedings (case no. 4b 176/12) against Puritan Medical Products Co., LLC on November 7, 2012, based on an alleged infringement of claim 1 of German utility model DE 20 2004 021 787.1 Claim 1 relates to flocked swabs and requires that the swabs be covered with fiber deposited by flocking in an ordered arrangement normal to the surface of the swab.
The Düsseldorf Court made clear at the hearing that Puritan’s HydraFlock® and PurFlock Ultra® flocked swabs are flocked differently and do not have fibers in an ordered arrangement normal to the surface of the swab as claimed in claim 1 of the ‘787.
The Court’s findings are particularly relevant since the asserted ‘787 utility model is a branch-off from Copan’s European patent EP 1 608 268 B1 relating to the same invention which also requires fibers deposited by flocking in an ordered arrangement of the fibers normal to the surface of the swab.2 Thus, it can be concluded from the Court’s clear position regarding the ‘787 that Puritan’s HydraFlock® and PurFlock Ultra® flocked swabs are also outside the scope of Copan’s European patent.
In light of the clear position expressed by the Court, Copan irrevocably withdrew the inspection proceedings against Puritan. In addition, the Court ordered that Copan must reimburse Puritan for all attorney fees incurred under applicable German law with respect to the inspection proceedings.
All of Copan’s German utility models relating to flocked swabs3 expired at the end of March 2014 and are irrelevant for sales from that date forward. Therefore, Puritan and Puritan’s customers have unprejudiced freedom to sell Puritan’s HydraFlock® and PurFlock Ultra® flocked swabs in Europe without concern for Copan’s European patent or expired utility models.
Puritan Medical Products Co., LLC, is an American company known worldwide as the trusted manufacturer of single-use products for the healthcare, diagnostic, forensic, critical environment, food safety, and drug manufacturing industries.
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1 German utility models can provide rights similar to patent rights except legal proceedings may begin before a patent office examiner ever looks at the substance of the utility model for validity. That is what happened here.
2 The EP patent was challenged in Opposition Proceedings at the European Patent Office. The Opposition Division significantly narrowed the scope of the patent from what had originally been granted. An appeal to further narrow or completely invalidate the patent is pending.
3 DE 202004021787 U1; DE 202004021930 U1; DE 202004021932 U1.
