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 - 05 April 2024 - is below:

UK

Court of Appeal overturns Patents Court decision on validity following submissions from the UKIPO.

On 22 March 2024, the Court of Appeal handed down its decision in J.C. Bamford Excavators Ltd v Manitou [2024] EWCA Civ 276. Birss LJ wrote the lead judgment, with which Elisabeth Laing LJ and Nugee LJ agreed.

At first instance, HHJ Hacon sitting as a Judge of the Patents Court had found three of the J.C. Bamford (JCB) patents in suit invalid. JCB had appealed, but settled with Manitou before the appeal was heard. The settlement allowed JCB to continue its appeal against the finding of invalidity of one of those patents: EP (UK) 2 263 965 (the Patent). In accordance with the settlement terms, Manitou did not oppose this appeal but pursuant to CPR PD 52D para 14.1(6)(b) and the decision of the Court of Appeal in Halliburton’s Patent [2006] EWCA Civ 185, the Comptroller of the UKIPO was notified and made submissions at the hearing.

The Patent related to a control system for safely operating a telehandler. At first instance, the Patent was held to be obvious over Japanese patent application No. 2000-329073 (referred to in the judgment as ‘Aichi’), which described a control system for a cherry-picker. Unlike a telehandler, the arm of a cherry-picker can rotate around a vertical axis as well as moving up and down and extending/retracting. The Court of Appeal agreed with the first instance judge that it would have been obvious to apply the method of Aichi to a telehandler. However, the Court of Appeal found that the resulting system would not fall within claim 1 of the Patent on its correct construction. The appeal therefore succeeded and the order for revocation of the Patent was overturned.

Under the Halliburton principle, the appellant must pay the UKIPO’s costs relating to the appeal alongside their own costs. However, as noted in Halliburton, there are still potential benefits for the appellant in cases such as this where the patent in suit has its validity confirmed “in the teeth of some opposition”.

EPO

EPO sets out requirements for exception to amendment admissibility rules under Article 12(4) of Rules of Procedure of Boards of Appeal.

On 9 January 2024, the Technical Board of Appeal (TBA) of the EPO made its decision in case number T 0246/22. The patent-in-suit was owned by the Otis Elevator Company (Otis) and related to a method for automatically updating the software for a lift. The opposition division (OD) had maintained the patent in amended form according to an “auxiliary request 1”.

On appeal, the TBA reversed the decision of the OD, finding both the patent as granted and as amended by auxiliary request 1 invalid for lack of inventive step. Otis had filed additional auxiliary requests during the opposition proceedings. However, the OD had not decided upon those requests as a higher-ranking claim request had already been found allowable. Since the decision under appeal was not based on these additional requests, the TBA had to decide whether Otis had demonstrated that they were “admissibly raised and maintained in the proceedings”. If so the auxiliary requests would necessarily form part of the appeal proceedings. Alternatively, the auxiliary requests would constitute “amendments” under Art. 12(2) and (4) of the Rules of Procedure of the Boards of Appeal (RPBA) and it would be at the discretion of the TBA whether they should be considered in the appeal.

The TBA held that the onus is on the amending party to demonstrate that a submission that might constitute an amendment had been “admissibly raised and maintained”. To show that claim requests were “admissibly raised” in the decision leading to appeal under Art. 12(4), the party making the requests must show that:

(i) the requests were filed in due time, typically before the expiry of the time limits set by the OD; and

(ii) it was made clear, explicitly or by way of unambiguous implication, for which purpose the requests were filed – that is, which objections of the other party or the OD those requests seek to overcome and how that is achieved.

In this case, the TBA held that Otis had not indicated sufficiently clearly for what purpose each auxiliary request was filed. Otis had not set out the technical effect caused or the technical problem solved by the features added in each auxiliary request, and therefore had not made factual submissions relevant to the application of the problem-solution approach to determining inventive step. The TBA therefore decided that Otis’ requests had not been “admissibly raised”, and therefore constituted “amendments” under Art. 12(4).

The TBA noted that Otis had failed to sufficiently indicate why the auxiliary requests overcame the raised objections and the purpose of Otis’ auxiliary requests had been “obfuscated” by the alternate addition and omission of features. There was also the risk of a “fresh case” being raised by Otis’ addition of features from the description of the patent, rather than the claims as granted. The TBA therefore declined to allow all but one of the auxiliary requests (which contained all the limitations of the higher-ranking claim requests) into the appeal proceedings. The TBA reasoned that as this was the most restricted claim request, it was the most suited to overcome the inventive step issues raised in the proceedings. However, that auxiliary request was ultimately not considered to meet the requirements of Article 56 EPC and the patent was revoked.

UPC

Decisions on the approach to confidentiality clubs in the UPC by Local Divisions in The Hague, Düsseldorf and Paris.

As readers will recall from Irides Weekly Update 12/2024, The Hague Local Division of the UPC issued a decision in Plant-e v Arkyne which opened the possibility of “attorneys’ eyes only’’ confidentiality clubs that do not include any individuals from the parties involved.

On 11 March 2024, the Düsseldorf Local Division appeared to depart from The Hague Local Division’s ruling in relation to Curio Bioscience Inc’s application for the protection of confidential information in its case against 10x Genomics Inc. (10x Genomics v Curio (UPC_CFI_463/2023)). After considering Art. 9(1) and (2)(a) of Directive (EU) 2016/943 (the Trade Secrets Directive), Art. 58 of the UPC Agreement and r. 262A RoP, the court noted that the individuals granted access to confidential information must not exceed what is necessary for compliance with the right of the parties to an effective legal remedy and a fair trial. However, the court considered that a minimum of one natural person from each party must be granted access to confidential information to ensure a fair trial, which would appear to rule out “attorneys’ eyes only” confidentiality clubs.

On 27 March 2024, the same division released a decision in Fujifilm Corporation v Kodak GmbH, Kodak Graphic Communications GmbH and Kodak Holding GmbH (UPC_CFI_355/2023), which reaffirmed its approach in 10x Genomics v Curio, concluding that r. 262A.6 RoP establishes “as a ground rule of paramount importance that at least one natural person from each party and the respective lawyers or other representatives are to be granted access in order to ensure a fair trial”.

However, the Paris Local Division’s order of 26 March 2024 in C-Kore v Novawell (UPC_CFI_397/2023) sheds a new light on the issue and indicates that although r. 262A RoP provides for the inclusion of at least one natural person from each party, parties may forego the right to include employees in a confidentiality club by mutual agreement provided this does not impact on a fair trial.

More detailed commentary on these decisions will be found on our UPC microsite here soon.

UPC

Paris Central Division decides on the treatment of reamendments to a patent.

On 27 February 2024, the Paris Central Division rejected Edwards Lifesciences Corporation’s (Edwards) request to make amendments to EP 3 646 825 (EP 825) in its case against Meril Italy srl (Meril). The proposed revisions aimed to align the amendments made in response to Meril’s counterclaim for revocation at the Munich Local Division with proceedings at the Paris Central Division.

Meril began a revocation action against Edwards in relation to EP 825 in the Paris Central Division. Edwards’ statement of defence included a conditional application to amend EP 825. Subsequently, in its rejoinder to Meril’s reply, Edwards requested the court’s permission to make ten further amendments to EP 825, after the deadline for filling an application had passed. A request for the same amendments had been filed by Edwards at the Munich Local Division to address validity attacks made by Meril in its counterclaim for revocation in the pending infringement proceedings between Edwards and Meril.

Edwards argued that, as the revocation counterclaim in the Munich Local Division was made after the deadline for submitting its defence in the Paris Central Division proceedings, it was unable to align its requested amendments in both proceedings early for consistency and procedural economy. Edwards also submitted that the late application in the Paris Central Division proceedings would not lead to prejudice as the amendments were identical to the requests made at the Munich Local Division. Furthermore, Edwards argued that r. 263(1) RoP (Leave to change claim or amend case) applied as Edwards sought to amend the previous claim amendments, as opposed to filling a new application.

On 8 February 2024, Meril submitted an application seeking that the court reject Edwards’ request to change its original application to amend EP 825.

The Court’s decision

The Court held that r. 263(1) RoP did not apply as Edwards’ request did not relate to a claim. Instead, it fell within the scope of r. 50(2) RoP (Contents of the defence to revocation and Counterclaim for infringement). R. 30(2) RoP therefore applied and granted the court discretionary powers to permit Edwards’ request for subsequent amendments to EP 825 after the deadline for such requests had passed. The Court considered the principles set out in the RoP and relevant opposing factors. On balance, the Court ruled that the subsequent amendments to EP 825 did not fulfil the purposes of consistency and procedural economy. The Court noted that the UPCA and RoP allow for a patent to be attacked by different subjects or jurisdictions and include various tools to prevent inconsistencies in decisions.

As a result, it is not required that a patentee’s defences are aligned in all proceedings. The principles of consistency are only relevant when the proceedings address the same subject matter, which did not apply here.