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 - 23 August 2024 - is below:

UPC

Court of Appeal overturns decision to include Ireland in PI.

On 19 June 2024, the Local Division of the Hague handed down two preliminary injunction decisions in parallel cases concerning the same parties, Abbott Diabetes Care Inc. (Abbott) and Sibio Technology Limited (Sibio). These decisions were reported in Irides WU 25 2024.

In the proceedings with case no. UPC_CFI_130/2024 the Hague Local Division considered that Abbott’s request for a preliminary injunction (PI) extended to Ireland. This was on the basis of the statement in Abbott’s application that “the Patent is valid and in force in the Contracting Member States of Germany, France, The Netherlands and also Ireland”. The Hague Local Division noted that Ireland had signed the Agreement on a Unified Patent Court (UPCA), and despite not yet ratifying the UPCA, was therefore a Contracting Member State. Sibio did not challenge this point, leading the Court to decide that it did have competence to grant a PI extending to Ireland.

This was in contrast to the proceedings with case no. UPC_CFI_131/2024 (between the same parties), in which Sibio did challenge the Court’s competence to grant a PI extending to Ireland and Abbott responded stating that it did not intend to include Ireland in its request.

Sibio filed an appeal against the order in UPC_CFI_130/2024, requesting that the impugned order be set aside and that Abbott’s request for provisional measures be rejected. This was accompanied by an application for suspensive effect of the PI pursuant to r. 223 RoP.

Applying Art. 74(1) of the UPCA, the Court of Appeal noted that an appeal has no suspensive effect unless it decides otherwise at the motivated request of one of the parties. Such a request may only be granted if the circumstances justify an exception to this rule, for example in circumstances where the order is manifestly erroneous or if the enforcement of the order would make the appeal devoid of purpose.

The Court of Appeal agreed that, insofar as the impugned PI order extends to the territory of Ireland, this would be manifestly erroneous. A country will only become a Contracting Member State once it has signed and ratified the UPCA, meaning that Ireland could not be considered to be covered by the text of Abbott’s request for a preliminary injunction. The Hague Local Division therefore awarded more than was requested, contrary to Art. 76 UPCA. The fact that Sibio did not contest the competence of the Court does not alter this interpretation, as Sibio was not expected to anticipate the Court’s erroneous interpretation. The Court of Appeal did not therefore adjudicate on the question of whether the UPC could grant provisional measures covering Ireland (or any other EU Member State that has not signed and ratified the UPCA) if such relief has been expressly requested by the applicant.

The Court of Appeal ordered the grant of suspensive effect insofar as the impugned order extends to the territory of Ireland but refused to grant suspensive effect insofar as the impugned order does not extend to the territory of Ireland.

UPC

Lisbon Local Division clarifies the requirements of r. 13.1(h) of the Rules of Procedure.

On 16 August 2024, the Lisbon Local Division in preliminary injunction proceedings issued an Order in respect of an application by Telefonaktiebolaget LM Ericsson (Applicant) against (1) ASUSTek Computer Inc.; (2) Arvarato Netherlands B.V.; and (3) Digital River Ireland Ltd. (Defendants) for compliance with r. 13.1(h) of the Rules of Procedure (RoP) (UPC_CFI_317/2024).

R. 13.1(h) RoP requires that parties provide, in their Statement of Claim, information (where applicable) regarding prior or pending proceedings before the UPC, the EPO and any other court or authority relating to the patent at issue.

The Applicant had originally stated in its application for a preliminary injunction that there were no such parallel proceedings, but then a month later applied to update this with information relating to proceedings concerning the same patent in certain European countries. The Defendants responded, requesting an order that the Applicant comply with r. 13.1(h) RoP within 14 days and provide copies of: (i) all prior art relied upon in all proceedings referenced, together with (ii) pleadings; (iii) statements of case; and (iv) expert reports from these proceedings. The Defendants argued that such an order was necessary as non-compliance could harm the Defendants’ defence in the current proceedings, e.g. if prior invalidity proceedings referred to an anticipating prior disclosure.

Dismissing the Defendant’s requests, the panel explained that the purpose of r.13 is to enable the Registry to check certain details of the claim. The specific purpose of r. 13.1(h) RoP is to limit the risk of contradictory decisions and lis pendens situations by allowing the Registry to understand the existence and relevance of prior or pending proceedings relating to the patent before the case is attributed to a panel. In the case of ex parte proceedings, the more onerous requirements of r. 206.4 RoP apply, which require the provision of information in respect any pending proceedings and/or any unsuccessful attempts in the past to obtain provisional measures in respect of the patent. In accordance with r. 16.2 RoP, the Registry is required to check whether the requirements of r. 13 have been complied with, but is under no obligation to verify that the information provided is correct.

The panel held that compliance with r. 13.1(h) RoP had been rightly checked by the Registry and that the Applicant had acted reasonably in supplying the missing information, even if later during the written phase and on its own initiative. The panel noted that the Defendants had provided no legal basis for their request for the provision of the additional documents and therefore the application should be dismissed. Unlike r. 13.1(f) and (j) RoP, r. 13.1(h) does not provide any legal grounds for requesting additional documents such as evidence or annexes. Further, compliance with such a request would have been very burdensome, especially in the context of urgent preliminary injunction proceedings.

Leave to appeal was granted.

NORWAY

Court of Appeal upholds BMS’ apixaban patent.

On 3 June 2024, the Borgarting Court of Appeal dismissed an appeal by Teva, upholding the first instance decision and the validity of BMS’ patent. In its judgment, the Court of Appeal considered the Norwegian Patents Act, preparatory works and commentary on the law on plausibility in Norway and also took into account EPO case law including the application of the EBA’s decision in G2/21 in the TBA’s decision in T116/18. Although they suggested that the application of T116/18 “may seem to indicate a somewhat lower threshold” than that in previous EPO cases, they nonetheless held that the relevant criterion for reliance on a stated technical effect is that set out in G2/21: “a patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would consider said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention".

The Court of Appeal held that the skilled team would have considered it credible (and also probable) from the application that apixaban had the technical effect claimed, namely that it was a potent and selective factor Xa inhibitor with improved pharmacological properties. The Court of Appeal therefore held that the patent was inventive over the prior art.

SWEDEN

Court of Appeal upholds BMS’ apixaban patent.

On 20 June 2024, the SVEA Court of Appeal dismissed an appeal by Teva, upholding the first instance decision of the Patent and Market Court and the validity of BMS’ patent. The Court of Appeal did not consider G2/21 in its short judgment on inventive step, but did refer to it in the context of sufficiency. The Court held that on the basis of the patent as a whole in light of the common general knowledge, the skilled person would have found it probable that apixaban was a factor Xa inhibitor and thus suitable for achieving the claimed therapeutic effect. The fact that the patent does not contain apixaban’s Ki-value or other biological data was held not to affect this assessment.

RWANDA

New IP Law approved.

On 31 July 2024, Law No. 055/2024 of 20 June 2024 on the Protection of Intellectual Property (Law 055/2024) came into effect in Rwanda, repealing previous Law No. 31/2009 of 26 October 2009. This new law has expanded and streamlined the country’s existing IP legislation.

For patents, Law 055/2024 covers:

• requirements for registration;
• patent duration (20 years);
• the examination and opposition process;
• invalidity;
• patentee rights of exclusive use (and certain limitations on these rights, for example, for use of the invention for scientific or technical research purposes, or private use); and
• compulsory licences.

Law 055/2024 also now allows amendments to patent applications (although, adding matter is impermissible) and permits the conversion of an existing application into a provisional application – to enable an earlier filing date where an inventor needs more time to work out the details of their invention.

Law 055/2024 also grants protection for utility models and, more generally, there are new provisions for IP enforcement measures, such as corrective measures and damages. If IP infringement is found, under Law 055/2024 this can now lead to criminal convictions with prison terms.