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 - 06 September 2024 - is below:

UPC

Court of Appeal rejects jurisdiction challenge.

On 3 September 2024, the Court of Appeal (Klaus Grabinski Presiding) issued its decision (UPC_CoA_188/2024) in DISH & SLING v Aylo relating to DISH’s patent EP 2 479 680, which relates to a method for presenting rate-adaptive streaming media via the internet.

 DISH and its exclusive licensee SLING (together, DISH) brought an infringement action against Aylo in the Mannheim Local Division of the UPC. Aylo launched a preliminary objection, on the grounds that: (i) the UPC lacked jurisdiction; (ii) the Mannheim Local Division was not the competent court; and (iii) the action should be dismissed as it was manifestly bound to fail.

 At first instance, the Local Division rejected Aylo’s objection, holding that the UPC has international jurisdiction pursuant to Art. 31 UPCA and Art. 71b(1) of the Brussels I Recast Regulation. The alleged indirect infringement concerned the offer and supply of video files and/or media players required for streaming to customers in Germany. The Local Division also held that Aylo’s arguments that the action was manifestly unfounded were not grounds for a preliminary objection under r. 19.1 RoP, and that they should instead be assessed in the final decision on the merits. Aylo appealed the decision.

 In its decision, the Court of Appeal held that the Brussels I Recast Regulation must be interpreted to mean that the UPC has international jurisdiction in an infringement action where: (i) the European patent in suit is in force in at least one Contracting Member State; and (ii) the alleged damage may occur in that particular Contracting Member State. For alleged damage caused via the internet, the likelihood of such damage may arise from the possibility of obtaining products and/or using services from an internet site accessible from that Contracting Member State.

 The fact that Aylo offered and supplied video files and media players to internet users in Germany was therefore sufficient to establish the jurisdiction of the UPC. This would be the case even if the alleged infringer’s servers were located outside the territory of any Contracting Member State where the patent in suit was in force. The Court of Appeal therefore rejected Aylo’s appeal, finding that the UPC did have jurisdiction.

 The fact that actual or threatened infringement may occur in Germany also led the Court to conclude that the Mannheim Local Division was a competent Court. Finally, the Court of Appeal upheld the local division’s conclusion that the list of preliminary objections under r. 19.1 RoP was to be regarded as exhaustive, and concluded that application of r. 19 to 21 RoP therefore cannot be extended to other defences, such as abusive procedural conduct and manifest lack of foundation.

EPO

EBA issues preliminary opinion in G 1/23.

On 16 August 2024, the Enlarged Board of Appeal (EBA) issued its preliminary opinion in the referral G 1/23, addressing the interpretation of the term "available to the public" in the context of prior art.

 The referral came from decision T 483/19 which concerned the validity of Mitsui Chemicals Inc’s European Patent no. 2 626 911 (the Patent). The Patent claimed a material suitable for use as an encapsulating material for a solar cell, which comprises a parameterised polymeric material. One of the prior art citations disclosed a commercial product ENGAGE® 8400 (a marketed polymer).

 The key question from the referring board was whether the non-analysable or reproducible product ENGAGE® 8400 should be included as part of the state of the art for the purposes of Art. 54(2) EPC. This followed the decision in G 1/92, in which the EBA held that a product forms part of the state of the art where it is possible for the skilled person to discover and reproduce the composition or internal structure of a product without undue burden (the “enablement requirement”).

 In the present case, the EBA held that the term “reproduce” covered two possibilities: taking the product again in the specific form in which it was put on the market and in which it is readily available, or manufacturing the given product by way of a suitable method, starting from some starting material which is different from the product placed on the market. The questions referred and statements made in G 1/92 only made sense under the second interpretation, and so the relevant question was whether the marketed product ENGAGE® 8400 could be reproduced via a different route (i.e. other than starting from the specific form in which ENGAGE® 8400 was available on the market).

 The EBA opined that a reasonable and consistent reading of G 1/92 leads to the conclusion that non-reproducible products do not form part of the state of the art in their entirety. However, it noted that such an interpretation is problematic and lacks a clear legal basis in the EPC. If applied, this would lead to unacceptable results and irreconcilable contradictions with the general structure of the EPC system. For example, the EBA questioned how teachings which do not form part of the state of the art for not being “reproducible”, could nonetheless form part of the common general knowledge of the skilled person. The assumption that a skilled person would ignore an irreproducible but readily available product (such as ENGAGE® 4800) does not hold.

 Instead, the EBA posited that the most straightforward solution to prevent any absurd outcomes arising from a strict application of G 1/92, is to assume that the enablement requirement is also satisfied by the non-reproducible product in its readily available form, so that a physical product is by definition enabled by being put on the market. This would mean that such products also belong to the state of the art, including all their analysable properties and features, such as their composition.

 The state of the art status of the irreproducible product must lead to the result that such a product could not be patented later, and may therefore be important from a novelty or inventive step perspective.

UPC

Munich Local Division finds Avago’s patent invalid for lack of novelty.

On 30 June 2024, the Munich Local Division (Dr Matthias Zigann presiding) handed down its decision in Avago v Tesla. The dispute related to Avago’s patent EP 1 838 002, which related to a “hybrid” radio frequency transmitter that aimed to combine the advantages of “Cartesian-based” and “polar-based” transmitters known in the art. At the time of judgment, the patent was only in force in Germany.

 Avago claimed that the patent was infringed by the interior radar installed in Tesla’s vehicles. The Court referred to the standard set out by the Court of Appeal in 10x Genomics & Harvard v Nanostring (UPC_CoA_335/2023) in determining the claim scope of the patent in suit, noting that:

i. In accordance with Article 69 of the EPC, the patent claim is not only the starting point, but also the decisive basis for determining the scope of protection of the European patent;

ii. The description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim;

iii. The patent claim is to be interpreted from the perspective of the person skilled in the art;

iv. Appropriate protection for the patent proprietor should be combined with sufficient legal certainty for third parties; and

v. The principles for interpretation apply equally to the assessment of infringement and validity of a European Patent.

 The Court found the patent to be anticipated by a single piece of prior art, the figures in which were found to comprise a unitary disclosure. Avago’s auxiliary request was also held to be anticipated by the same piece of prior art. Since the patent was found to be invalid, the Court declined to make any findings on infringement.

UPC

Düsseldorf Local Division refuses PI application.

On 6 September 2024, the Düsseldorf Local Division handed down its decision in two linked actions where a preliminary injunction had been requested (ORD_50564/2024 and ORD_50565/2024 - Novartis & Genentech v Celltrion Inc & oths). The Court held that Celltrion's conduct did not yet constitute an imminent infringement. As a result, the applications were rejected.