- German Federal Patent Court narrows scope of two Solvay patent claims;
- Many of Neo’s product sales no longer fall under the claims’ narrowed scope;
- Enforcement of recent patent infringement judgment against Neo completely stayed in one case (subject to security requirement), and partially not enforced by Solvay in second case;
- Supreme People’s Court in China grants Neo’s request for transfer of patent infringement case;
- One patent claim asserted by Solvay held invalid in China.
TORONTO, ONTARIO (Neo Chemicals & Oxides Europe LTD. and Zibo Jiahua Advanced Material Resources Co., Ltd (collectively “Neo”, “the Company”), which produce and distribute a broad range of light and heavy rare earth engineered products, today reported an update on certain intellectual property litigation matters.
Neo has been engaged in litigation in Germany to invalidate patent claims in EP 0863846 and EP 0735984, both of which are now expired, by Rhodia Operations (“Rhodia”), an affiliate of Brussels-based Solvay. On October 25, the German Federal Patent Court in Munich invalidated one of Solvay’s product composition claims in EP 0863846. Two weeks earlier, on October 11, the German Federal Patent Court had issued a ruling that significantly limited the scope of Solvay’s patent claim on product composition in EP 0735984. Both verdicts of the German Federal Patent Court are subject to appeal.
As a result of the ruling on October 11, a substantial amount of the Company’s product sales that were alleged by Solvay to have infringed upon EP 0735984 no longer fall under the scope of the narrowed patent claim. Solvay has declared it will not enforce the judgment of infringement previously issued by the Regional Court of Dusseldorf (Germany) with respect to products that fall outside the narrowed scope of the patent.
Neo noted that the Higher Regional Court of Dusseldorf (Germany) recently stayed enforcement of Solvay’s prior judgment for infringement of the now invalid patent claims in EP 0605274, subject to the normal condition that Neo provide appropriate security for the stay of enforcement of the judgment. The stay was based upon the German Federal Patent Court’s prior ruling on September 26 that invalidated certain of Solvay’s patent claims in EP 0605274.
In China, the Supreme People’s Court of the People’s Republic of China (“Supreme People’s Court”) handed down a ruling on September 29 in favor of Neo’s appeal of a ruling in a patent infringement case filed by Rhodia and Daiichi Kigenso Kagaku Kogyo Co. (“DKKK”). The Supreme People’s Court ruled that the lawsuit filed by Rhodia and DKKK for the five patents before Shandong High Court is improper and that Shandong High Court has no jurisdiction over this matter. The Supreme People’s Court ruled that the whole lawsuit filed by Rhodia and DKKK for the five patents must be transferred to the Shandong Zibo Intermediate People’s Court for hearing.
Neo and other parties have initiated proceedings before China’s Patent Reexamination Board to challenge the validity and the scope of each of the five patents that are the subject of the action filed by Solvay and DKKK. In one patent, the relevant product composition claims were already invalidated by the Patent Reexamination Board this March in an action filed by Hysci (Tianjin) Specialty Materials Company. The decision in the Hysci matter is subject to Solvay’s right of appeal. Neo’s application to invalidate the claims on a second patent, ZL 96196505.3, was denied recently by China’s Patent Review Board on October 20, and the Company is reviewing an appeal.
Neo is a unit of Neo Performance Materials, a leader in rare earth and other advanced materials globally.
About Neo Performance Materials
Neo Performance Materials is a leading supplier of advanced materials used in a wide range of technology applications across many sectors, including consumer electronics, fiber optics, hybrid and electric vehicles; and clean energy technologies. With state-of-the-art processing and separating facilities in Europe and Asia, the Company helps customers to diversify the risk of sourcing materials from a single country. The Business, which is organized along three business segments: Neo Chemicals and Oxides, Neo Magnequench, and Neo Rare Metals, is engaged in the production, processing and development of rare earth and zirconium based engineered materials; magnetic powders; and rare metals. Neo Performance Materials is headquartered in Toronto, Ontario, Canada; with corporate offices in Greenwood Village, Colorado, US; and Beijing, China. The Company operates globally with sales and production across 10 countries, being Japan, China, Thailand, Estonia, Singapore, Germany, United Kingdom, Canada, United States, and South Korea. For more information, please visit www.neomaterials.com.