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 - 03 November 2023 - is below:

STOP PRESS | UK

Supreme Court refuses to grant permission to appeal in apixaban compound action

On 1 November 2023, the Supreme Court refused BMS permission to appeal against the Court of Appeal decision which upheld the decision of the lower court that the compound patent for apixaban was invalid for lack of plausibility. The Supreme Court held that the application did not raise an arguable point of law.

UK 

Patents Court considers doctrine of equivalents and Arrow declaratory relief in relation to “heat not burn” electronic cigarette products

On 25 October 2023, His Honour Judge Hacon handed down a decision in an action between the Philip Morris group (PMI) and British American Tobacco group (BAT). PMI sought revocation of EP (UK) 3 367 830 (EP 830), owned by BAT. BAT counterclaimed for infringement of EP 830 by the sale of a “heat not burn” (HNB) product called the IQOS ILUMA, marketed by PMI. PMI also applied for Arrow declaratory relief in respect of a defined HNB system. 

Construction

The Judge considered the meaning of integer 8 of Claim 13 of EP 830. Integer 8 stated that “a maximum temperature to which the heater is heatable by penetration with the varying magnetic field in use is exclusively determined by a Curie point temperature of the heating material”. 

The parties submitted different arguments on the correct construction of integer 8, with Hacon HHJ concluding that “exclusively determined” means that there must at all times be a fixed relationship between a Curie point of the heater material and the maximum temperature of the heater. Therefore, a flexible relationship between the two, where the maximum temperature is determined at least in part by one or more factors other than a Curie point of the heater material, will not fall within the claim on its normal construction. 

On this basis, Hacon HHJ took the view that the IQOS ILUMA system would not infringe EP 830 on a normal construction. 

Doctrine of equivalents

The court then considered infringement by equivalence. Hacon HHJ identified the inventive concept as follows: 

“An HNB system in which (i) an article containing smokeable material is inserted into the heating zone of a heating apparatus, (ii) the smokable material is heated by inductive heating and (iii) the maximum temperature of the heater in the apparatus is exclusively determined by a Curie point of the heating material. 'Exclusively determined' means that the maximum temperature is at all times fixed by reference to a Curie point and dependent on no other factor.” 

Hacon HHJ considered that the variant in this case was an HNB system as per the inventive concept, save that (i) the heater is in the consumable; and (ii) the maximum temperature of the heater is not at all times fixed by reference to a Curie point of the heating material, in that it depends in part on whether the system is calibrating.

Questions 1 and 2

Considering the revised Improver questions, as set out in Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48, Hacon HHJ first looked at whether the variant achieved substantially the same result in substantially the same way as the invention.

The Judge answered yes, explaining that although there may have been practical pros and cons between an aspect of the inventive concept and an aspect of the variant, these are not necessarily relevant to the first question. A variant may work less well but still achieve exactly the same result in exactly the same way. 

Similarly, Hacon J concluded that the answer to question 2 was yes, on the basis that PMI had not provided any explanation as to why the skilled team would have thought the same result is not achieved in the same way by the variant. 

Question 3

Finally, the Judge considered whether the BAT would have otherwise intended strict compliance with the literal meaning of the relevant claim of EP 830. Hacon  HHJ referred to the “disclosed not claimed” principle first endorsed by Arnold J (as he then was) in Akebia Therapeutics Inc v Fibrogen, Inc [2020] EWHC 866 (Pat). 

The disclosed not claimed principles is summarised as follows: 

"If the description discloses a plurality of possibilities for achieving a specific technical effect, but only one of those possibilities is catered for in the patent claim, the utilisation of any other possibilities properly does not constitute infringement of the patent with equivalent means.” 

Hacon HHJ explained further that where a patentee states in the description that the technical effect can be achieved by either means A or B but only claims B, this is a clear indication that A does not fall within the claims, either as a matter of normal construction or by way of equivalents. 

Applying this to the facts, the Judge concluded that the answer to the third question was yes, meaning that the IQOS ILUMA did not fall within the claims of EP 830. 

Arrow declaratory relief

PMI also sought a declaration that the marketing and sale of certain products would have been acts that were not novel and/or obvious over the prior art at the relevant date. 

Instead of linking the declaration to a specific product, PMI sought to define “product” as a “heat-not-burn system consisting of a heating device and single use tobacco-containing sticks” with a number of characteristics, including that the metallic susceptor in the stick is impermeable to air.  PMI argued that the declarations were required because of two groups of patent applications currently before the EPO (the Blandino and Kaufman Families). 

BAT objected to the request for Arrow declaratory relief on three bases: (1) that the declaration sought lacked clarity; (2) that a declaration based on lack of novelty would expand the scope of the declaration beyond the scope of the disclosure in the prior art; and (iii) that the declaration would serve no useful purpose.

Hacon HHJ was unconvinced by the first objection, disagreeing with BAT’s argument that the skilled person would consider “impermeable to air” to be unclear. 

Regarding the second objection, Hacon HHJ considered it to be expected that a proposed Arrow declaration would differ to the subject-matter of the prior art. If the declaration went no further than stating that the subject matter of the prior art was old as of the relevant date, it would be pointless. This is therefore not a procedural bar to the granting of an Arrow declaration. 

Turning to whether the declaration would serve a useful purpose, the Judge considered the principles arising from Fujifilm Kyowa Kirin Biologics Co., Ltd v Abbvie Biotechnology Ltd [2017] EWCA 1, Glaxo Group Ltd v Vectura Ltd [2018] EWCA Civ 1496, Mexichem UK Ltd v Honeywell International Inc [2020] EWCA Civ 473, and Actavis Group PTC EHF v ICOS Corp [2019] UKSC 15. 

Hacon HHJ added two further principles to those arising from these cases: 

1. “An Arrow declaration is likely to serve a useful purpose if the applicant can show that (a) the respondent's portfolio of patent applications and/or patents creates real doubt, likely to continue for a significant period, as to whether technical subject-matter which the applicant wishes to exploit can lawfully be used, (b) the applicant's reasonable intention to exploit that subject-matter would be of significant commercial advantage to it and (c) the declaration sought would, if granted, eliminate or significantly reduce the delay.”
    
2. “The court will more readily find that there is a useful purpose where the respondent's behaviour has been consistent with an intent to prolong the doubt.” 

However, neither of these principles were deemed to apply in this case. Further, the Judge found difficulty understanding what useful purpose the declaration would serve. PMI argued that the declaration was justified on the basis of a general useful purpose, not linked to the IQOS ILUMA product. Hacon HHJ therefore, refusing PMI’s application, held that he was unable to conclude that the declaration would be of any significant commercial value to PMI in reality.

INDIA 

Delhi High Court directs defendant to pay damages for patent infringement

On 20 October 2023, the Delhi High Court handed down a decision on damages following a patent infringement action started in 2008 by Strix Limited against Maharaja Appliances Limited (Maharaja). Maharaja had counterclaimed for revocation on the basis of lack of novelty and lack of inventive step. Judgment here.

By way of background, Strix had sold the patented control system to Maharaja in 2005-2006, however, Maharaja continued to use an identical system in its products after this date, without permission. The court granted an interim injunction in 2009.

In its counterclaim, Maharaja had relied on three documents, including a US patent, a PCT application, and a European patent.  The US Patent and PCT applications were found to have  priority dates later than that of the alleged infringed patent and did not constitute valid prior art. The third prior art document, a European Patent, was found to be valid prior art. However, Maharaja sought to introduce these documents through a witness who was not on the list of witnesses and did not attend for cross-examination (the defendant had avoided attending the court proceedings for several years).  The validity pleadings were therefore deemed not to have been proven.  In any event, the Court disagreed with Maharaja’s arguments on lack of novelty and inventive step.  Maharaja then sought to suggest that the patentee had not worked the patent in India, but the court disagreed on the basis that the patentee had sold the product (to Maharaja) in India.

Maharaja went on to suggest that it was a bona fide importer, but produced no evidence to support this claim, and the mere assertion in a letter to a Chinese supplier was insufficient to establish this claim.

Based on the evidence before the court, it was held that the patent was valid and infringed by Maharaja 's product. By avoiding the court proceedings, Maharaja did not produce its accounts meaning that the court could not assess an account of the infringer’s actual profits.  However, the court opted to make its assessment based on publicly available materials and awarded damages of Rs. 5,000,000 together with actual costs of Rs. 3,144,925.

EPO 

Form about entry into the European phase discontinued and changes to calculation of deadlines

• As reported in Irides Weekly Update here, since 1 November 2023, the EPO now no longer sends out EPO Form 1201 (“Entry into the European phase”).  Instead this information is available in a dedicated section on the EPO website. 
   
• In a further change to EPO procedure, communications from the EPO dated 1 November 2023 and after are deemed to have been received on the date of the letter and relevant deadlines will be calculated on this basis.