법무법인(유한) 율촌 | Yulchon LLC

Yulchon Successfully Defends Daewoong Pharmaceutical Co., Ltd. in a Preliminary Injunction Action [Seoul Central District Court, December 6, 2022]

Yulchon represented and successfully defended Daewoong Pharmaceutical Co., Ltd. (“Daewoong Pharmaceutical”) in a preliminary injunction action brought by a global pharmaceutical company based on claims for infringement of patents on heart failure treatment. 

The global pharmaceutical company, a patentee of the original heart failure treatment, filed a petition seeking a preliminary injunction to prohibit the sale of generic drug by Daewoong Pharmaceutical on the basis that the generic drug infringed its patent rights for two co-crystal patents and one combination drug patent. In response, Yulchon argued that (i) the first co-crystal patent was highly likely to be found invalid due to insufficient written description of manufacturing process of the compound in the patented claim, (ii) the second co-crystal patent was not infringed under the doctrine of equivalents because the problem-solving principle of the generic drug is not identical to that of the patented claim, and the scope of protection for the second co-crystal patent is limited by prosecution history estoppel, and (iii) the combination drug patent will highly likely be invalidated because, although the patent is a medical use patent, the pharmacological data was lacking. Based on the forgoing arguments, Yulchon successfully defended Daewoong Pharmaceutical, and the Court dismissed the petitioner’s claims on all three patents.

This case is significant in that it sets the practical standards for issues regarding the patentability of co-crystal patents as well as the doctrine of equivalents, both of which have been actively debated.  Furthermore, Yulchon was able to bring about the best possible outcome against the originator company’s patent infringement claim on behalf of the client based on Yulchon’s deep understanding and ample experience in pharmaceutical patent cases.