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 - 29 November 2024 - is below:

EPO

CRISPR patents revoked by patentee over procedural concerns.

By its decisions of 6 November 2024, the Technical Board of Appeal revoked two CRISPR patents each co-owned by the Regents of the University of California, the University of Vienna and Emmanuelle Charpentier (together, the patentees), upon request of the patentees.

The patents related to Jennifer Doudna and Emmanuelle Charpentier's Nobel-prize winning discovery of applications for CRISPR, i.e. methods of modifying target DNA using a complex comprising a Cas9 polypeptide and a DNA-targeting RNA.

Following opposition proceedings, the Opposition Division (OD) had maintained both patents in amended form. The patentees and the opponents then appealed those decisions; the patentees seeking to reinstate their main requests and the opponents seeking to revoke the patents. The Board issued its preliminary opinions in both cases in summer 2024. The Board held the preliminary view that neither patent was entitled to claim priority and both were thus invalid (for different reasons) over intervening art, a Charpentier/Doudna paper.

Two weeks prior to the oral proceedings, the patentees submitted a lengthy brief criticising the Board's technical understanding of the claimed invention and their application of legal standards relating to sufficiency of disclosure, exceptions to patentability, priority, novelty and inventive step. In addition, they expressed concern about a recent decision (T 2229/19) in which the same Board had held an auxiliary request filed in response to a preliminary opinion as inadmissible, without hearing from the patentee, on the basis that it did not overcome a different issue that had yet to be discussed. The patentees noted that they "cannot be expected to expose the Nobel-prize winning invention protected by the present patent to the repercussions of a decision handed down under such circumstances, when other members of this family … are still at a stage where the Patentees can procedurally ensure that they will ultimately be fully heard by the Board on all substantive issues".

In the present cases, the patentees considered that further auxiliary requests would remedy issues raised in the preliminary opinions. However, given the procedural concern that the Board would refuse to admit responsive auxiliary requests before the oral proceedings, and to safeguard against not being heard by the Board on all issues, the patentees withdrew their appeals and approval of the text in both patents, thereby seeking revocation of the patents. 

UPC

The Hague Local Division considers doctrine of equivalents (UPC_CFI_239/2023).

On 22 November 2024, the Hague Local Division of the UPC handed down its decision in Plant-e v Arkyne. The decision concerned Plant-e’s patent EP 2 137 782, which relates to a device and method for converting light energy into electrical energy using living plants. The Court found the patent to be valid and infringed by equivalents by Arkyne, who were offering for sale and selling biofuel cells.

The Court set out that, when considering infringement, it would assess the scope of the patent’s protection in two steps, applying Art. 69 EPC and the Protocol on its interpretation. The first step is an assessment of “literal” infringement of the relevant features of the patent in view of the claim construction. If the patent is not found to have been literally infringed, then the Court moves onto the second step, which is an assessment of equivalents. In this case, the Court held that the patent was not literally infringed, as Arkyne’s product was missing the features of the claim relating to the location of the living plant and its roots.

When going on to consider infringement by equivalents, the Court noted that the UPCA makes no provision on the doctrine of equivalents. In the absence of such guidance, the Court will apply a test based on case law in various national jurisdictions, in line with what was proposed by both parties. Having taken this into account, the Court set out that a variation would be “equivalent” to the element specified in a claim if these four questions are answered in the affirmative:

1. Technical equivalents: Does the variation solve (essentially) the same problem that the patented invention solves and perform (essentially) the same function in this context?
2. Fair protection for patentee: Is extending the protection of the claim to the variation proportionate to a fair protection for the patentee in view of their contribution to the art, and is it obvious to the skilled person from the patent publication how to apply the variation (at the time of infringement)? 
3. Reasonable legal certainty for third parties: does the skilled person understand from the patent that the scope of the invention is broader than what is claimed literally? 
4. Is the allegedly infringing product novel and inventive over the prior art? (i.e. there is no successful Gillette or Formstein defence).

In this case, the Court held that the answer to all of these questions was yes, and therefore the patent was infringed by equivalents. The Court granted an injunction for the UPC territory where the patent is valid (Benelux, France, Germany and Italy) and ordered Arkyne to recall and destroy the infringing products, with the Court specifying wording which Arkyne should use in letters, emails and on its website to effect that recall. Arkyne was also ordered to pay Plant-e damages and costs.

UPC

Mannheim Local Division gives first substantive FRAND decision (UPC_CFI_210/2023).

On 22 November 2024, the Mannheim Local Division gave its first substantive decision on FRAND (Fair, Reasonable, and Non-Discriminatory) licensing, offering important insights into how it will approach these cases going forwards. The Court found Panasonic’s 4G patent valid and infringed by OPPO. A central issue was OPPO’s FRAND defence, which was ultimately rejected, resulting in an injunction in Panasonic’s favour. This decision provides guidance on procedural and substantive aspects of FRAND negotiations, including conduct during negotiations and disclosure requirements.

The Court confirmed that SEP holders like Panasonic must notify implementers of alleged infringement and justify their licensing offers as FRAND-compliant. Panasonic met its obligations by providing a patent list and claim charts which referred to the patent in suit and sufficiently explaining the basis for its offers. OPPO’s criticisms of the adequacy of the information provided by Panasonic, raised for the first time at the oral hearing, were dismissed as procedurally late and unconvincing. SEP holders are not required to disclose sensitive details about third-party licences at every stage of the negotiations. The Court also clarified that a fully drafted licence agreement is not required during initial negotiations unless specifically requested by the implementer.

Implementers, on the other hand, must provide transparency about their use of the patented technology. OPPO failed to meet this requirement, relying on IDC market data instead of actual sales figures, which hindered Panasonic’s ability to assess appropriate licensing terms. The Court emphasised that implementers must disclose usage details and provide adequate security after making a counteroffer. OPPO’s bank guarantee was deemed inadequate because it lacked safeguards against insolvency. 

The Court affirmed the concept of a FRAND “corridor” of acceptable terms, giving SEP holders flexibility within this range. Panasonic’s offer was found to sit within this corridor based on its comparable licences and established court benchmarks, and subsequent adjustments made during negotiations did not undermine its FRAND compliance. Additionally, the Court confirmed its jurisdiction under Art. 32(1)(a) UPCA to resolve OPPO’s FRAND rate setting counterclaim but declined to set the rate, due to OPPO’s reliance on IDC data rather than its actual usage figures. OPPO’s proposal that the UPC determine the FRAND rate only for EPC countries, the USA and Japan attracted considerable criticism from the Court as lacking good faith.

While the decision provides a clear framework for assessing FRAND disputes, it leaves some questions unanswered, such as how the UPC would determine a FRAND rate if both parties’ offers fell within the FRAND corridor or resolve disputes on non-rate terms. Recent reports of a settlement between Panasonic and OPPO raise further uncertainty about the decision’s potential appeal. Nevertheless, this ruling highlights the UPC’s commitment to balancing the rights of SEP holders and implementers while ensuring procedural efficiency.

CHINA/NEW ZEALAND

New Zealand and China launch Patent Prosecution Highway pilot programme.   

On 1 November 2024, the intellectual property offices of China and New Zealand launched a pilot Patent Prosecution Highway. Under the programme, applicants may request expedited examination in either office, provided that one or more of their claims have been found to be allowable in the other country. To be eligible for expedited examination, the application must have the same earliest date (priority date or filing date) and the claims must sufficiently correspond to the claims deemed patentable by the other office.