INTRODUCTION Contributed by: Andreas von Falck, Hogan Lovells International LLP
Spain Among the most significant developments in the field of patent litigation in Spain in 2024 was the legal dispute over apixaban, an anticoagulant. The litigation – invalidity proceedings, protec- tive actions, PIs and infringement proceedings, which all ran/are running in parallel – involved the Barcelona and Madrid Commercial courts and reached the Supreme Court as a result of a conflict about competence amongst them. The case involved relevant procedural intricacies which will impact future litigation strategies of both patentees and potential defendants. At the request of Teva, on 15 January 2024 the Commercial Court No 4 of Barcelona declared BMS’s apixaban patent and supplementary pro- tection certificate (SPC) to be invalid. On 9 Feb- ruary 2024, Teva filed a protective brief before the same court aimed at preventing ex parte PIs on 9 February, which was formally admitted on 13 February. In parallel, BMS (and other entities) requested ex parte PIs before the Commercial Courts of Madrid against Sandoz (6 February 2024), extended to Teva and Normon (12 February 2024) to prevent the launch of the latter’s apixa- ban generics onto the Spanish market. Surpris- ingly, and despite the Barcelona court’s judge- ment declaring the patent and the SPC invalid, by orders of 12 and 15 February 2024, respec- tively, the Commercial Court No 13 of Madrid granted the PIs arguing that: • the Barcelona invalidity judgment was not final; • the validity of other designations of the same patent and SPC had been held valid in other jurisdictions; and • no oppositions or invalidity actions had been filed for 20 years against them.
Subsequently, Teva filed for an anti-suit-injunc- tion before the Barcelona court aimed at pre- venting the enforcement of the PIs ordered by the Madrid court against it. Teva argued that BMS’s PIs should have been filed before the Barcelona court because of the protective brief. Teva’s petition was granted by order of 26 Feb- ruary 2024. Against this backdrop, both the Barcelona and the Madrid courts referred their competence dispute to the Supreme Court. By a ruling of 24 April 2024, Spain’s highest court declared that the Barcelona court should retain jurisdiction over the PI requests against Teva on the grounds that a court in front of which a protective brief had been filed retains competence to hear PIs on that brief if any are filed. It further declared that anti-suit-injunctions are not allowed under Span- ish law since they exceed the scope of what can be considered a PI and impinge on other courts’ jurisdictional powers. If a party wants to overturn a court decision, it must appeal it – just as the first instance judgement declaring the invalidity of BMS’s patent and SPC had been appealed. In fact, Section 15 of the Court of Appeals of Bar- celona overturned that decision in record time, by judgement of 18 July 2024, with the effect of the withdrawal of the apixaban generics from the market whilst the case is subject to extraordinary appeal proceedings before the Supreme Court. In the field of technology and telecommunica- tions, SEP/FRAND litigation has remained a hot topic during 2024 as holders of standard essen- tial patents (SEPs) sued implementers in Spain as part of their global litigation strategy. Some of the pending cases have, as a result, been settled in the context of global licences being signed in 2025. Implementers were also active filing protective briefs before the Barcelona Commer- cial Courts in the weeks leading up to the 2024
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