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 - 28 June 2024 - is below:

UK

Patents Court grants permission to use experiments and for further disclosure.

On 20 June 2024, David Stone, sitting as a Deputy High Court Judge, handed down his decision on three applications in the ongoing action between Salts Healthcare Limited (Salts) and Pelican Healthcare Limited (Pelican). Salts is the proprietor of GB 2 569 212, a patent which relates to ostomy bags (which can be connected to a stoma to collect human waste such as faeces or urine after a colostomy or urostomy). In particular, the patent claims an ostomy bag which is welded in a way that distributes force evenly and prevents bulging or sagging when the bag is full.

Salts and Pelican both applied for permission to rely on experiments which modelled the bulging and sagging of full ostomy bags. Salts’ application was unopposed by Pelican and was granted. Salts did, however, object to Pelican’s experiments on (i) Salts’ own product which was said to embody the patent, (ii) recreations of bags which form the prior art and the CGK, and (iii) a bag said to be an embodiment of the patent with prior art modifications.

The Judge granted Pelican’s application in relation to all three categories of experiment. He noted that it would assist the trial judge to see photographs of how the bags perform when filled. He also rejected Salts’ submission that Pelican had “cherrypicked” a preferred set of products to give more favourable results, noting that such a selection was an inevitable consequence of requiring the parties to narrow the prior art and define the CGK.

Salts also sought orders for Pelican to disclose an amended PPD providing further details on the welded portions of Pelican’s products and to provide Model D (search-based) disclosure in relation to certain features. The Judge ordered Pelican to provide the amended PPD, noting that the purpose of a PPD was to avoid obliging the defendant to give excessive discovery, and for this to be possible, particulars sufficient to enable all issues of infringement to be resolved should be provided. However, the Judge refused to order further disclosure, noting that to do so would likely derail the trial timetable, and that the issues addressed by such disclosure should be covered by the amended PPD.

The Judge also made several comments on Salts’ conduct in “taking every point” in the litigation, noting that the case had already been transferred from the IPEC to the Patents Court as a result of complexity largely introduced by Salts, and urging Salts to resist the temptation of satellite disputes.

UY

Uruguay joins Patent Cooperation Treaty.

On 11 June 2024, the Senate of the Uruguayan Parliament approved Uruguay’s accession to the Patent Cooperation Treaty (PCT). The next steps are for the Executive Branch to enact the bill, and for the bill to be published in the Official Gazette.

Following this, necessary adjustments will be made to align local practices with PCT standards, a process that will take several months.

UPC

Düsseldorf Local Division orders infringement and revocation proceedings to be heard together.

On 20 June 2024, the Local Division of the Unified Patent Court in Düsseldorf gave an order (UPC_CFI_459/2023) in the action between Tridonic and CUPOWER. Tridonic brought infringement proceedings against CUPOWER in relation to its patent EP 2011218 B1 which relates to a power factor correction circuit, and CUPOWER counterclaimed for revocation. The language of the proceedings is German.

The decision concerned Art. 33(3) UPCA, which governs the discretion of the local or regional division to bifurcate or hear together proceedings in circumstances where a counterclaim for revocation is brought in the case of an infringement action. R. 37(1) ROP requires the panel to make an order on how to proceed as soon as practicable after closure of the written procedure and having heard the parties, but, if appropriate, such a decision may be made earlier in accordance with r. 37(2) ROP.

Since neither party raised any objections, the issue of how to proceed with Art. 33(3) UPCA could be decided before conclusion of the written procedure. The panel deemed such an early decision to be justified and necessary. Further since some of the panel were only employed on a part-time or case-by-case basis, it was “appropriate for reasons of procedural economy” to obtain the assignment of the technical judge at an early stage in order to be able to take this into account in the scheduling and avoid the risk of delay that might arise if the technical judge were only appointed at a later stage, such as during the interim proceedings.

The Local Division exercised its discretion under Art. 33(3) UPCA to hear the infringement and revocation actions together for reasons of efficacy. The panel deemed it advantageous to hear the infringement and revocation issues based on a uniform interpretation of the claims by the same panel of judges. Such a uniform approach was further justified given the “moderate” complexity of the technology in issue. The panel also requested the assignment of a technically qualified judge to the panel.

This decision is consistent with the expected practice of the UPC to only bifurcate in a minority of cases.