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 - 13 September 2024 - is below:

UPC

Düsseldorf Local Division provides guidance on ordering security for costs.

In a recent decision published on 6 September 2024, the Düsseldorf Local Division gave guidance on factors to be considered when ordering a security for costs order.

The decision was in relation to the proceedings brought by SodaStream against Aarke AB (Aarke). In its Statement of Defence, Aarke requested the Court to order that SodaStream provide adequate security for the costs. It suggested an amount of EUR 400,000 based on the decision of the Administrative Committee on the ceiling for recoverable costs here.  

In August 2024, the Judge-Rapporteur held that an order for security of costs was not necessary as SodaStream, as a member of the PepsiCo group, would have no financial issues in meeting any costs order and there was no likelihood of unenforceability.

Following an application for review, Aarke raised concerns with enforcing a UPC decision against SodaStream, which is based in Israel, arguing it could take many years and was not something that had been done before. However, the order of the Judge-Rapporteur was upheld. The Court held that the factors to be considered when awarding an order for security for costs include the financial position of a party “that may give rise to a legitimate and real concern that a possible cost order might not be recoverable” and the likelihood that a UPC decision may not (or, if so, in an unduly burdensome way) be enforceable. The Court noted that the fact that it may take a long time to enforce a UPC judgment in Israel was not sufficient grounds to order security.

Aarke were granted leave to appeal the decision.

CH

Federal Patent Court rivaroxaban decision dismisses PI application and demonstrates the importance of protective letters.

In its decision of 10 July 2024, the Federal Patent Court dismissed Bayer’s ex-parte preliminary injunction application against Helvepharm based on its rivaroxaban once-daily dosage regimen patent.

Helvepharm had filed a protective letter in relation to its Rivaroxaban Zentiva product, asserting that Bayer’s once-daily dosage regimen patent was invalid for lack of novelty and inventive step over a number of prior art citations. The Court made a number of findings in relation to the prior art, including:

1. Participants in a clinical study are part of the public and are not subject to any implied confidentiality obligation. Helvepharm relied on a draft participant consent form from a pre-priority rivaroxaban clinical study as anticipatory prior art. Although in draft form, the Court found it credible that a materially similar final version would have been distributed pre-priority. As a result, the participant consent form was deemed to be prior art, albeit it was ultimately held not to be novelty-destroying.
2. Reference to an active ingredient by its internal code name, in this case ‘BAY 59-7939’ was directly and unambiguously disclosed as it was clear from public sources that this code was used for rivaroxaban and that the skilled person would look up the code.
3. When considering inventive step, a scientific poster and its conference abstract can be regarded as a joint disclosure when made available to the public at the same time.
4. The skilled person can correct obvious reference errors in the prior art (in this case correcting ‘310’ and ‘304’ to ‘3010’ and ‘3004’ respectively with assistance from the list of abstracts).

In summary, the Court held that claim 1 of the patent was prima facie invalid for lack of inventive step over the scientific poster and two associated abstracts. Going further than just denying the ex-parte application, the Court held that there was no need to conduct subsequent inter-partes proceedings, and made a final (but appealable) decision dismissing the PI application. Bayer was ordered to compensate Helvepharm CHF 25,000 for legal costs of filing the protective letter.