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 - 26 April 2024 - is below:

CH

Federal Court finds apixaban compound patent valid, dismissing nullity action against its SPC.

In a decision that has only recently become publicly available, the Federal Court dismissed a nullity action against SPC C01427415/01 on the basis that the basic patent, EP (CH) 1 427 415 B1 (EP 415) was invalid for lack of inventive step. EP 415 protects the factor Xa inhibitor apixaban, sold by Bristol-Myers Squibb and Pfizer as Eliquis®. In EPC contracting states, this places Switzerland in line with decisions in Sweden, Norway and France where the patent has also been found valid, but contrary to decisions in the United Kingdom, Spain and Ireland.

The Court began by considering the previous foreign judgments, before examining the priority claim. The applicant had challenged priority on the basis that BMS was not the successor in title of the priority document and that there was novelty-destroying intervening prior art, however, the Court concluded that there was no issue with the priority claim.

The Court then conducted a fairly detailed assessment of plausibility, required in order to apply the second step of the EPO problem-solution approach to inventive step. In particular, the judgment explored whether the technical effect must be plausible on the basis of the original application in order for post-published data to be taken into account, and if so, what the standard of plausibility would be. G 2/21 was discussed, with the court noting that two criteria must be cumulatively fulfilled: (i) the claimed technical effect must be recognised by the skilled person with his/her general technical knowledge and on the basis of the originally filed application as being covered by the originally disclosed technical teaching, and (ii) the skilled person must be able to deduce that the technical effect is embodied by the originally disclosed invention. The Court concluded that these criteria were both fulfilled. In regard to the second criterion, the skilled person would be able to deduce that apixaban is a potent and effective factor Xa inhibitor as the application guides the skilled person to determine the Ki values of the compounds according to the invention, with the compound with the lowest Ki value being a promising candidate for further (pre)clinical testing. The court considered that this would not involve unreasonable effort for the 110 specifically disclosed embodiments, of which apixaban was one (however, it would be unreasonable for all of the compounds covered by the Markush formula).

The Court, then going on to apply the problem-solution approach, found that the subject-matter of claim 1 of the basic patent was based on an inventive step and dismissed the nullity action.

EPO

TBA considers relevant principles for remitting a case from a Board of Appeal.

In Mayo Foundation for Medical Education and Research v Merck Sharp & Dohme LLC and another (Case T-1006/21), an Appeals Board of the EPO upheld an Opposition Division decision that Mayo’s patent was not entitled to priority and so was revoked for lack of inventive step. Both parties had made auxiliary requests for remittance to the opposition division if unsuccessful at appeal. The respondents also argued that the appellant's request for remittal had been made too late.

In dealing with these auxiliary requests, the Board set out the relevant principles relating to remittal from a board of appeal under Art. 111(1) of the EPC, including:

1. The discretionary decision to remit or not is to be taken ex officio, at any time during appeal proceedings.
2. A decision on remittal is not dependent on any request by the parties and must be taken even in the absence of such a request.

Therefore, it was held that the question of the late filing of the appellant’s request for remittal, as raised by the respondents, could not arise. However, when exercising its ex officio discretion in these appeal proceedings, the board did not see any reasons in favour of remittal.

UPC

Service on legal entities without a seat or principal place of business in a UPCA member state.

Daedalus Prime LLC (Daedalus) attempted to serve on two Xiaomi defendants (Defendants 1 and 2), each with registered addresses in China, through another Xiaomi defendant with its registered address in Germany (Defendant 4). Daedalus also attempted to serve a MediaTek defendant (Defendant 5) with a registered address in Taiwan through its German branch office.

R. 271.5(a) of the UPC Rules of Procedure (RoP) provides that service of a statement of claim on a company may occur at any place within the Contracting Member States where the company has a permanent or temporary place of business.

The Court noted that, as it was not argued (nor made out) that Defendants 1, 2 and 5 had established their own permanent or temporary business within the Contracting Member States, service must be effected out of jurisdiction under r. 273 and r. 274 RoP. The Court held that service by an alternate method or at an alternative place under r. 275 RoP was not available until service under r. 274.1(a)(ii) or (iii) had been attempted. Further, it is the Court which has the power to issue service pursuant to r. 275 RoP. The Court also confirmed that the RoP do not provide for the possibility of service being effected at an "establishment" inside the Contracting Member States.

As such, Daedalus’ requests for service on Defendants 1, 2 and 5 were dismissed by the Court of First Instance of the Hamburg Local Division. The decision can be found here.