Irides: Weekly patent litigation update

he 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 - 02 August 2024 - is below:

UK

Court of Appeal reverses decision on AI patent application.

On 19 July 2024, the Court of Appeal handed down its judgment in Comptroller – General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825. The Court of Appeal judgment overturns the first instance decision of the High Court and upholds the findings of the UKIPO Hearing Officer.

 Emotional Perception's patent application for an AI music recommendation neural network was refused by UKIPO as a computer program "as such", and therefore excluded from patentability under s.1(2) of the Patents Act 1977. The High Court overturned this decision in November 2023. But the English Court of Appeal has reversed it again, in line with the view of the UKIPO Hearing Officer.

 Since 2007, the UKIPO has followed the test set out in Aerotel to determine whether an invention relates to excluded subject matter under s.1(2).

 Aerotel steps (1) - (3)

 The first task for the Court of Appeal was to decide whether Emotional Perception’s Artificial Neural Network (ANN) fell within the definition of “a computer program”, following Aerotel steps (1) - (3).

 Birss LJ stated that a computer program could be defined as “a set of instructions for a computer to do something”, with a computer defined as “a machine which processes information”. This definition is similar to that adopted by the UKIPO during the hearing, and the previous findings of the Court of Appeal in Aerotel, where a computer program was described as being a “set of instructions”.

 Emotional Perception argued that its ANN was not a computer program, due to the configuration of ANNs (e.g. its weights for the artificial neurons) compared to standard computer programs. However, in applying the above definition of a computer program, Birss LJ rejected this and found that an ANN is “clearly a computer – it is a machine for processing information" regardless of how it is implemented.

 The fact that the weights were not configured by a human programmer and rather through training was not considered to make a difference, with Birss LJ noting that even the final form of standard computer programs is computer-generated to some extent, due to conversion of human-written code to computer code during compilation.

 The Court of Appeal therefore found that the claimed ANN was still a set of instructions for a computer to do something, falling under the exclusion of a “computer program... as such” in accordance with s.1(2) of the Patents Act 1977.

 Aerotel step (4)

 With the finding that Emotional Perception ANN was a computer program, the Court of Appeal then proceeded to step (4) of the Aerotel test to decide whether it was nevertheless patentable by its technical contribution.

 In each of the hearings before the UKIPO, High Court, and Court of Appeal, the contribution made by Emotional Perception’s invention had been construed as:

“…an ANN-based system for providing improved file recommendations… The fundamental insight is in the training of the ANN which analyses the physical properties of the file by pairwise comparisons of training files…. The result is that in the trained ANN, files clustered close together in property space will in fact have similar semantic characteristics. Once trained the ANN can then be used to identify… files from a database which correspond semantically to a target file, and to provide… file recommendations to a user device…”

 In considering technical contribution, the Court of Appeal found the features of how the claimed ANN was created (i.e. training), was just “in effect, part of the creation of the program" and did not form part of the technical contribution. Other than the output of the ANN (sending a recommended file to a user device) the remainder of the contribution was therefore found to consist of a computer program.

 In relation to the output of the ANN it was found that this was simply “the presentation of information”, another exclusion under s.1(2), and therefore unpatentable. This was because it was found that the improvement of the recommendation was based on semantic qualities rather than technical ones. The output therefore does not turn the claimed invention into a system which produces a technical effect outside of excluded subject matter. Accordingly, the claimed invention was unpatentable.

What does the future hold for AI inventions in the UK?

 The decision ends a period of divergence in the UK from the approach of the EPO. Whilst some had hoped the UKIPO would continue to be more permissive in assessing the patentability of inventions relating to ANNs we will likely now return to an approach where inventions utilizing an ANN may be patentable, but should be assessed in the same way as any other computer-implemented invention.

 Following this decision, the UKIPO suspended its previous guidance on the examination of patent applications relating to artificial intelligence. On 25 July 2024 the UKIPO issued new guidance, making it clear that examiners should treat ANN-implemented inventions like any other computer implemented invention for the purposes of s.1(2). This means examiners should apply the Aerotel approach to assess whether an ANN-implemented invention makes a contribution which is technical in nature.

Emotional Perception has indicated that it plans to appeal the decision to the Supreme Court.

SPAIN

Barcelona Appeal Court finds apixaban patent valid, overturning first instance judgment.

In a decision of 23 July 2024, the Barcelona Appeal Court handed down its judgment finding ES 2 329 881 (ES 881) valid, reversing the judgment handed down earlier this year by the Commercial Court number 4 of Barcelona. ES 881 protects the factor Xa inhibitor apixaban, sold by Bristol-Myers Squibb and Pfizer as Eliquis®, and is the Spanish validated part of EP 1 427 415. In EPC contracting states, this places Spain in line with Sweden, Norway and France, where the patent has also been found valid, and contrary to the UK and Ireland where the patent has been invalidated. ES 881 contains claims to the apixaban compound as well as use claims to apixaban for the treatment of thromboembolic disorders.

 Priority

 The Court first considered Teva’s claim that ES 881 was not entitled to priority and that there was novelty-destroying intervening prior art. Teva argued that BMS was not the successor in title of the priority document as the right to priority had not been correctly assigned from BMS Pharma (the subsidiary) to BMS Company (the parent). Ownership of the priority right (there was no written assignment from subsidiary to parent) was governed by US law, in particular the law of the State of Delaware, and BMS introduced opinions from two U.S. law experts. The Court found that Teva did not have standing to bring such a challenge to the legal relationship between the first applicant (and by extension their successor in title, in this case the subsidiary) and the second applicant (in this case the parent) where there is no conflict between them. Further, the challenge to priority was extremely formal and therefore an abusive exercise. The Court rejected the claim for lack of priority and therefore the claim for lack of novelty over the intervening prior art.

 Inventive step

 The Court then turned to the inventive step challenge. Teva argued that the patent application as filed did not make it plausible that apixaban was suitable for the treatment of thromboembolic disorders. The Court considered the case law of the EPO Boards of Appeal on the requirement of plausibility, analysing in particular the decision of the Enlarged Board of Appeal (EBA) in G 2/21. The Court considered that the term ‘plausibility’ does not correspond to a well-defined legal concept, nor does it constitute a requirement of inventive step under Art. 56 EPC, nor even of sufficiency under Art. 8 EPC.

 The Court then considered whether national courts are required to apply this new test (i.e. the one elaborated by the EBA in G 2/21), noting that proceedings before the national courts are not a review of the patent grant procedure followed by the EPO. Instead, once a patent has been granted, interested parties may bring an action for invalidity before the national civil courts under grounds contemplated in Art. 138.1 EPC. Therefore, the Court considered its competence was limited to considering only the invalidity of the patent as granted. In the Court’s view, the Court should not refuse to recognise the inventive step of a granted claim to a single product (as here), on the grounds that the original application also sought the protection of other products or compounds that might not have had the desired technical effect. In the present case, apixaban undoubtedly had the claimed technical effect of inhibiting factor Xa in a sufficiently effective and specific manner for its therapeutic purpose, and therefore the patent as granted was not speculative, even if the application may have been.

 The Court justified this approach (an apparent departure from G 2/21), by the fact that referring to the application as filed would be an infringement of the applicant’s right to amend the application during prosecution. In this case, the applicant limited its claims to a single compound, apixaban, following an objection by the examiner that the claims were too broad, and further, added matter was not argued as a ground of invalidity.

 In the alternative, the Court went on to apply the criterion of plausibility or credibility to assess inventive step, based on the EBA’s reinterpretation in G 2/21, formulating the test elucidated by the EBA as follows. In order to rely on a claimed technical effect, the skilled person, on the basis of the information contained in the application and common general knowledge, must be able to conclude that the said technical effect derives from the original technical teaching and, secondly, that it actually involves an embodiment of the said teaching. According to the Court, the application does not need to contain information that would make the technical effect described plausible to the skilled person.

 The Court did not accept Teva’s argument that post-published data was inadmissible, as G 2/21 states that (i) evidence cannot be rejected merely because it post-dates the date of the application, and (ii) lack of plausibility is not an admissible ground for rejecting evidence from after the date of the application either. Teva’s initial argument was based on T 488/13 (Dasatinib) and on appeal Teva maintained that G 2/21 has not led to a change in the approach taken in the Dasatinib case. The Court disagreed, reiterating that according to the interpretation of G 2/21, to find the patent invalid it would need to be shown that the claimed effect of the claimed subject matter, i.e. apixaban and its ability to inhibit factor Xa, were not a concrete embodiment of the original invention. The Court considered that the requirement that the technical effect is plausible has been abandoned by the Enlarged Board of Appeal in G 2/21. BMS were therefore able to rely on the technical effect of apixaban as a "new factor Xa inhibitor with improved pharmacological properties", and the relevant claims involved an inventive step.

 Sufficiency

 In regard to Teva’s insufficiency attack, the Court again noted that it is not for national courts to review the actions of the EPO in granting the patent, and therefore the Court is not required to examine whether the Examining Division had correctly applied Art. 83 EPC. Instead, it is for the Court to examine whether or not the granted patent complies with the requirement of descriptive sufficiency as provided for in Art. 138.1 EPC. In contrast to the application as filed, the grated patent did not claim thousands of compounds, but only apixaban. Teva argued that, according to G 2/21, proof of the claimed therapeutic effect must be provided in the application as filed. The Court distinguished G 2/21, which was applied to second medical use claims, contrary to the current claims which were a mixture of product claims and first medical use claims. Even if G 2/21 were applicable to all therapeutic use claims, including the claims in issue, experimental data would not be required in the application unless the skilled person did not consider the therapeutic effect plausible. As explained previously, the Court considered that the technical effect of apixaban as a factor Xa inhibitor with improved pharmacological properties can be relied on to justify its inventive step and therefore the skilled person would have no reason to disregard the claimed therapeutic effect.

 The Court upheld the appeal, finding EP 881 valid and revoking the previous decision in its entirety. 

UPC

Courts consider administrative orders following settlement.

In Astellas Institute for Regenerative Medicine v Healios K.K and others (UPC 75/2023; UPC 80/2023), the Munich Central Division of the Unified Patent Court (UPC) set out that a case can be disposed of in the following ways after settlement:

1. if requested by the parties, the Court can confirm the settlement by decision under r. 365 Rules of Procedure (RoP) (requiring disclosure of the terms of the settlement to the Court);
2. the Claimant can apply to withdraw the action (with the consent of the Defendant) in accordance with r. 265 RoP, at which point the Court can declare the proceedings closed; or
3. as in this case, the parties can request that the Court dispose of the actions as they have become devoid of purpose under r. 360 RoP.

 The Court held that the Claimant was entitled to partial reimbursement of the Court fees when disposing of a case under r. 360 RoP after settlement. The decision confirms that a mechanism exists to reclaim partial fees following settlement without having to disclose the terms of that settlement, notwithstanding the language of r. 370.9 RoP which appears literally to be limited to withdrawal of actions pursuant to r. 365 RoP.

 In CANÈ S.p.A. v France Développement Électronique  before the Paris Local Division (UPC 419/2023), the UPC confirmed a settlement agreement between the parties under r. 365 RoP, accepting the parties’ proposal for a reduced value of the dispute compared to that initially declared, with corresponding cost consequences. As the claim was concluded under r. 365 RoP, the Court published a (redacted) copy of the settlement agreement.

 Following an appeal between VusionGroup SA and a group of Hanshow companies, the Court of Appeal of the UPC (UPC CoA 1/2024, App 36394/2024) ordered that an application by the respondent for costs of an unsuccessful appeal is to be submitted to the Court of First Instance, even if the application for costs relates to the costs of appeal proceedings. The RoP do not provide for a special procedure for the determination of costs following an order or decision of the Court of Appeal, and the general procedure under r. 150 RoP therefore applies according to the Court. The Court also held that Hanshow was required to make an application that specifically relates to the cost of the appeal proceedings, and cannot add this to its pending application for an order for costs in relation to the first instance proceedings. Given the uncertainty prior to issue of this decision, the Court referred the application made to it to the Judge-Rapporteur of the Court of First Instance with the instruction that the date of filing of the application for costs with the Court of Appeal can be considered to be the date of filing with the Court of First Instance, in light of the deadline for filing an application of costs in R. 151 RoP (i.e. one month from service of the decision for which a costs decision is requested).

UPC

Court applies approach in Ocado v Autostore and grants access to pleadings and evidence.

As a member of the public, a third party (law firm Powell Gilbert) requested access to written pleadings and evidence from a concluded case between Abbott Diabetes Care Inc., Sibio Technology Limited and Umedwings Netherlands B.V. at the Hague Local Division of the UPC. The third party law firm argued that protection of integrity of the proceedings no longer plays a role in the balancing of interests as the proceedings have ended in a final order.

 Both Abbott and Sibio opposed the request. Abbott submitted that as it has appealed the order, thus the proceedings for the preliminary injunction and other preliminary measures were ongoing. Abbott also argued that the decision at first instance was limited to added matter and the majority of the arguments and evidence in issue between the parties were not addressed, were not in the public domain or subject to public debate and would be addressed by the Court of Appeal. Therefore, Abbott would not be able to bring forward its arguments and evidence for decision by the Court of Appeal without the risk of influence and interference from external parties. Abbott also invoked an appeal in parallel proceedings. Sibio argued that the third party law firm did not sufficiently demonstrate a legitimate interest, and that a professional interest in the decision underlying the case does not meet the required threshold.

 Applying Ocado v Autostore, the Court held that submissions that the third party law firm did not have a sufficiently specific interest accompanying their request must fail. As it was directly addressed in Ocado v Autostore, the Court also held that in the case of proceedings subject to appeal, withholding access to documents filed at first instance no longer serves the purpose of integrity of proceedings, regardless of whether all arguments were addressed by the court of first instance. Further, as Abbott did not apply for confidentiality of any of its annexes at first instance, its request to withhold access to all annexes was denied.

 The Court acknowledged the parties’ right to appeal, and access to documents was delayed by an initial term of 15 days to allow for this.