As we previously reported, Sanofi-Aventis sued Merck Sharp & Dohme in the District of Delaware for patent infringement based on Merck’s proposed follow-on biologics of Sanofi-Aventis’s Lantus® and Lantus® SoloSTAR® ([rDNA origin] insulin glargine) prefilled cartridge products.

On January 2, 2018, Merck moved for summary judgment of non-infringement on the grounds of patent exhaustion and implied license.  According to the decision on Merck’s motion issued last week, third-party Ypsomed AG supplies Merck with components for the injection pen device used in the accused products.  In 2009, Sanofi granted Ypsomed a non-exclusive, royalty-free license to European patent EP 1 603 611 (“EP 611”) and to “all world-wide equivalent patents claiming the same priority as” EP 611.

Merck argued that the license to Ypsomed encompassed certain of the patents asserted against Merck in the litigation because they are “equivalent” to EP 611.  Specifically, Merck argued that all patents having the same priority as EP 611, including certain of those asserted in the litigation, are “equivalent” to EP 611 and thus covered under the agreement.  In response, Sanofi argued that the “equivalent patents” provision applied only to those patents having both the same priority as EP 611 and the same claim scope, which Sanofi argues excludes the asserted patents in question.

In its decision, the court denied Merck’s motion.  Applying German law, the Court first found an ambiguity in the definition of “equivalent patents.”  Because the court also found Sanofi’s proposed interpretation to be “objectively reasonable” under German law, the court held that Merck is not entitled to summary judgment.