Two Defendants Ruled to Compensate 800,000 Yuan for Offering to Sell and Selling New Drugs

Recently, the Shanghai Intellectual Property Court (Shanghai IP Court) made a first instance judgment on the two cases of infringement dispute over invention patent with the plaintiff Nanjing Shenghe Company v. the defendants Hunan Warner Company and Dalian Zhongxin Company, and ordered the two defendants to immediately stop the infringement on the invention patent right owned by the plaintiff, and compensate the plaintiff for damages of 600,000 yuan and reasonable expenses of 200,000 yuan for the two cases in total.

The plaintiff was the patentee of the two invention patents named "The Application of L-ornidazole in the Preparation of Drugs against Parasitic Infection" and "The Application of L-ornidazole in the Preparation of Drugs against Anaerobic Bacteria Infection", which were still within the valid period.

In May 2019, the plaintiff found that the "L-ornidazole tablets" (the accused infringing products) manufactured by the defendant Hunan Warner Company were offered for sale and sold in Shanghai, Beijing, Tianjin, Hunan, Jiangxi and other places. On May 14, 2019, the two defendants participated in the "81st National Drug Fair" in National Exhibition and Convention Center（Shanghai）, offering to sell the accused infringing products.

The plaintiff held that the above-mentioned accused infringing products fell into the protection scope of corresponding claims of the two patents, the defendant Hunan Warner Company's act of manufacturing, selling and offering to sell the accused infringing products, as well as the two defendants' act of offering to sell and selling the accused infringing products together, all infringed the plaintiff's patent right for invention, and therefore it filed a lawsuit with Shanghai IP Court, requesting the defendant Hunan Warner Company to immediately stop manufacturing the products infringing the plaintiff's patent right for invention, and the defendants Hunan Warner company and Dalian Zhongxin Company to immediately stop selling and offering to sell the products infringing the plaintiff's invention patent right, immediately destroy the inventory of infringing products, and also the two defendants jointly compensate the plaintiff for damages in the two cases totaling 600,000 yuan, as well as reasonable expense of 400,000 yuan to stop the infringement.

The two defendants jointly pleaded that the accused infringing product belonged to prior art and did not constitute an infringement of the patent right involved in the case. The accused infringing products had not yet been manufactured on a large scale, and only 300 pieces of drug had been used for marketing.

Both parties confirmed that the accused infringing product fell into the protection scope of the patent right involved in the case claimed by the plaintiff, while the two defendants claimed that the accused infringing product used the existing technology.

After hearing the case, Shanghai IP Court held that the alleged infringing product involved the use of L-ornidazole in the preparation of drugs against parasitic infection, while the prior art defense evidence submitted by the two defendants only mentioned the application of ornidazole in the treatment of urogenital trichomonad infection, which obviously did not belong to the same technical scheme. In the publicity of the alleged infringing products, it was emphasized that L-ornidazole was based on the full study of ornidazole, through the pharmacological and toxicological research, the dextroisomer that produced neurotoxicity was removed, and the L-ornidazole with low incidence of adverse reactions and good safety was obtained, and the difference between L-ornidazole and ornidazole in the adverse reactions of the nervous system was clarified through comparison.

Therefore, the key point of the alleged infringing products used in the preparation of anti-parasite infection drugs was not that L-ornidazole had the same efficacy as ornidazole in the treatment of parasite infection, but that L-ornidazole had lower toxicity and higher safety in the treatment of parasite infection compared with Nitroimidazole drugs such as ornidazole. This could be confirmed by the invention content in the specification of the patent involved. The prior art defense evidence provided by the two defendants could not prove that there was no substantive difference between all the technical features accused of falling into the protection scope of the patent and the corresponding technical features in the prior art scheme, and therefore the prior art defense of the two defendants was untenable.

The defendant Hunan Warner Company confirmed that the alleged infringing products were manufactured by it, and it carried out the act of manufacturing infringing products. The two defendants offered to sell the infringing products through their own website, WeChat public account, exhibition and drug purchase website, while the infringing products were available for purchase in the market, so the two defendants jointly implemented the act of offering to sell and sell the infringing products. The two defendants should bear the civil liability to stop the corresponding infringement and compensate for the damages.

Based on the specific situation of the case, Shanghai IP Court considered the factors such as type of the patent right, the nature and circumstances of the infringement committed by the two defendants, and fully supported the plaintiff's claim for compensation. In addition, the court determined the reasonable expenses of the two cases that the two defendants should compensate the plaintiff according to the bills provided by the plaintiff, the apportionment of related cases and the actual situation of the case.