Irides: Weekly patent litigation update

The Irides Weekly Update is our round-up of patent litigation news highlights from around the world. Taking its name from the plural of “iris” - a nod to the ability of Irides to see what’s happening around the world. 

Our latest edition - 22 September 2023 - is below:

UPC

Two further preliminary injunction decisions have been made by the UPC

In the first decision, we understand that on 13 September the Vienna Local Division denied CUP&CINO Kaffeesystem-Vertrieb GmbH a preliminary injunction against Alpina Coffee Systems GmbH. A panel made-up of presiding judge Walter Schoeber and judges Maximilian Haedicke and Andras Kupecz decided that the applicant's EP 3 398 487 was not infringed and, accordingly, declined to grant the preliminary injunction.

The applicant's patent related to a milk-foaming device. The applicant alleged that infringement was ongoing not only in Austria, but also a number of other countries including Germany, Italy, and France. The alleged infringement had been ongoing since 2019, but the applicant had only learned of it in the Spring of 2023. The hearing took place inter partes and the Court was given the opportunity to inspect each party's milk-foaming machines as both parties turned up for the three hour hearing with them in-hand. However, the Court decided that the respondent's product did not infringe the applicant's patent and refused the application for a preliminary injunction. Therefore, there was no need for the Court to consider the validity of the patent, or the urgency of the request.

A further point of interest arose: following the PI application, unbeknownst to the patentee or its litigation counsel, one of the patentee's other representatives had accidentally opted-out the patent. However, the Court deemed this opt-out ineffective since the action relating to the non-opted-out patent had been filed first (Art. 83(3) UPC Agreement).

In the second decision, we understand that the Munich Local Division has granted 10x Genomic a preliminary injunction against NanoString Technologies in respect of its unitary patent, EP 4 108 782 (EP 782). EP 782 is currently subject to opposition at the EPO by NanoString's US entity. The hearing took place on 5-6 September 2023 and a lengthy  decision was handed down on 19 September 2023. Presiding judge, Dr. Matthias Zigann was joined on the panel by judges, Andras Kupecz and Tobias Pichlmaier and technical judge, Eric Enderlin.

During the 1.5 day hearing, the Court heard detailed submissions on the validity of EP 782 and the patentee accordingly filed an auxiliary request. We understand that the Court's decision to grant a preliminary injunction is not subject to a security payment but prevents NanoString from selling and providing services across all UPC contracting states. NanoString has indicated its intention to appeal the decision at the UPC Court of Appeal in Luxembourg.

 A further preliminary injunction request by 10x Genomics against NanoString will be decided on 10 October 2023 in relation to a separate patent (EP 2 794 928).

EPO

Opposition not inadmissible even though prior art wrongly identified in notice of opposition

In a recent decision given by the Technical Board of Appeal (TBA), the TBA agreed with the opposition division that an opposition was admissible even though the appellant opponent had incorrectly identified in its notice of opposition the publication number of the patent which had been regarded as the closest prior art. Decision here.

Before the opposition division, the patentee sought to argue that the opposition was insufficiently substantiated due to the erroneous citation of the publication number of document E2, and therefore the opposition was not admissible. The opposition division and TBA concluded that the patent proprietor's ability to retrieve the correct publication number using the inventor's name and a database search, without extensive investigation, was sufficient. They also referred to EPO case law stating that minor errors in citing patent numbers should not lead to opposition rejection.

The TBA emphasized that Rule 76(2)(c) of the EPC only requires an indication of evidence in the notice of opposition, not necessarily all evidence to be provided at that stage. As long as the notice of opposition allows the substance of the evidence to be established later without excessive effort, it met the requirements. In this case, the correct prior art patent could easily be found through a database search, making the opposition admissible.

The appellant had based its appeal exclusively on new arguments and new attacks that had not been presented during the first-instance proceedings, either in writing or during the oral proceedings, and that had therefore also not been considered in the decision under appeal. These arguments were late-filed. Accordingly, the appeal, including only late-filed arguments and attacks, was rejected.

INDIA

Significant amendments proposed to Patent Rules 2003

The Department for Promotion of Industry and Internal Trade, Ministry of Commerce & Industry, has published the Draft Patents (Amendment) Rules, 2023, proposing changes to Indian IP laws. Some key changes include:

• allowing divisional applications based on provisional specifications;
• reducing the timeline for examination;
• introducing a separate application for grace period;
• modifying the procedure for pre-grant opposition;
• reducing the timeline for Opposition Board reports;
• increasing fees for post-grant opposition, offering discounts on advance annuity payments, extending provisions for extensions; and
• requiring the age details of natural persons in the patent application process.