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 December 2024 - is below:

UK

Court of Appeal upholds invalidity finding and rules on added matter and obviousness.

On 5 December 2024, the Court of Appeal (CoA) handed down its judgment in Ensygnia v Shell, considering Ensygnia’s appeal of the judgment of the lower court invalidating its patent GB 2,489,332 (the Patent), which relates to the use of graphical images which encode information, such as barcodes and QR codes. Ensygnia appealed the Judge’s findings of invalidity on added matter, extension of scope of protection and obviousness. The CoA dismissed all but one part of Ensygnia’s appeal, thereby upholding the lower court’s determination that the patent was invalid. The decision can be found here.

After grant, Ensygnia amended the claims of its patent. A central issue on the arguments on extension of scope of protection and added matter was whether at various points in the history of the patent and its application as filed the relevant language encompassed a static (non-electronic) sign, such as a QR code printed on a piece of paper, in contrast to an electronic display. The distinction between static and electronic signs was also relevant to the question of obviousness in terms of what was taught by the prior art.

In the first instance judgment, the Judge construed claim 1 of the Patent as amended to cover the use of static signs, and therefore held it to be infringed by Shell’s use of printed QR codes as a method for payment at its petrol stations. Though this was challenged by Shell, Birss LJ, giving the leading judgment, reading the claim in context with the specification, agreed with the first instance finding.

On this construction, Birss LJ dismissed the appeal on extension of scope of protection, holding that as the specification in the patent as granted would lead the skilled addressee to conclude that the granted claim would cover only an electronic display, the Judge was right to find the patent claim as amended extended beyond the scope of the claim as granted. 

Ensygnia appealed two findings of added matter. The Court dismissed the first point, finding that there was not clear and unmistakable disclosure of a static sign in the application as filed. On this point, Birss LJ reiterated that, as a matter for the court, an expert’s opinion on the meaning of a word which is not a term of art is irrelevant. Birss LJ allowed Ensygnia’s appeal of the second added matter issue, finding that the rewording of part of claim 1 had basis in the application as filed.

Birss LJ also dismissed Ensygnia’s appeal on obviousness, holding that it was in fact open to the Judge to find that the Patent lacked an inventive step. He held that a finding that the skilled person could take forward the prior art and arrive at the claimed invention neither requires nor precludes a finding of obviousness; it remains a multifactorial question to be determined on the particular circumstances of the case. The other Judges agreed with Birss LJ.

UPC

Munich Local Division highlights unintended gap in service provisions in Rules of Procedure (RoP). (UPC_CFI_508/2023)

On 9 December 2024, the Munich Local Division granted an order that steps taken to bring preliminary injunction proceedings to the attention of the Defendant in the proceedings constituted good service pursuant to r. 275.2 RoP.

The proceedings in air up v Guangzhou concerned an inter partes application for preliminary measures filed by air up in December 2023. Guangzhou is domiciled in China and therefore service of the proceedings had to be effected under the Hague Service Convention (HSC). After a previous contact at Guangzhou did not respond to a request for Guangzhou to accept informal service via email, in May 2024, the Court Registry undertook formal service by posting the necessary translated documents to the competent Chinese Authority. Following several unfruitful enquiries by the Court Registry to the competent Chinese authority on the status of service between July and November 2024, air up sought an order that the steps taken to bring the proceedings to the attention of Guangzhou constitute good service pursuant to r. 275.2 RoP.

The Court noted that, in the present case, neither informal nor formal service in accordance with r. 274.1 (a)(ii) RoP and Art. 5 HSC could be effected. Citing Art. 15 HSC, the Court also noted that more than six months had elapsed since the date of transmission of the documents to the competent Chinese authority and all reasonable efforts had been made to obtain proof of delivery via the competent Chinese authorities. The Court therefore considered it adequate to give a judgment in the present case because: (i) the subject matter of the proceedings is a request for preliminary measures which is an urgent matter; and (ii) from previous requests for service by the competent Chinese authority, it is not to be expected that the request for service will be successful in the future.

Under r. 275.2 RoP, the Court may order that steps already taken to bring a statement of claim to the attention of the defendant by an alternative method or at an alternative place constitute good service. However, the Court highlighted that, according to this wording, only an (unsuccessful) attempt to serve a document by an alternative method or at an alternative place may be approved as good service. By contrast, the wording of r. 275.2 RoP indicates that an unsuccessful attempt to serve documents by means of r. 274.1(a)(ii) is not acceptable as good service.

The Court assessed that r. 275.2 RoP contains an unintended gap and held that, if an attempt of service under r. 274 RoP has failed and service by an alternative method or at an alternative place is neither possible nor reasonable, the Court may order that an unsuccessful attempt of service under r. 274 RoP shall also constitute good service. Therefore, service was deemed effective as of the date of the order.

UPC

Court of Appeal reverses Munich Local Division’s decision to grant a preliminary injunction in Dyson v SharkNinja litigation. (UPC_CoA_297/2024)

On 3 December 2024, the Court of Appeal issued its decision finding, contrary to the lower court, that on the balance of probabilities the patent in suit was more likely not to be infringed. The PI was therefore set aside.

Dyson is the registered holder of European patent EP 2 043 492 (EP 492) for “A hand-held cleaning appliance”. The Munich Local Division had granted a preliminary injunction against SharkNinja restraining it from selling certain models of handheld vacuum cleaners. This is because  the Local Division viewed that EP 492 was infringed and that none of the prior art called into question the validity of the patent. Such assessments of validity and infringement are standard in PI proceedings.

Interestingly, the Court of Appeal conducted a re-review of the evidence in the case, which included expert evidence from both parties and videos of SharkNinja’s allegedly infringing products. In terms of construction, the Court of Appeal, utilising the expert evidence adduced, viewed that the skilled person would understand the claim in a certain way, and there was nothing contained in the patent claim itself, or the description or drawings to contradict this interpretation.

Given this construction and the videos showing the operation of SharkNinja’s products, the Court of Appeal ruled that it was more likely than not that SharkNinja’s products would not satisfy all of the integers of the claim. Thus, on the balance of probabilities, it was deemed more likely that the patent was not infringed. The injunction against SharkNinja was therefore lifted.

Although the Local Division had ordered that the parties should each provisionally bear their own costs of the proceedings, the Court of Appeal ruled that this part of the order should be reversed and Dyson should be ordered to bear SharkNinja’s costs in the Court of First Instance and in the appeal proceedings.

UPC

Düsseldorf Local Division grants Order for Security for Costs. (UPC_CFI_140/2024)    

On 3 December 2024, the Düsseldorf Local Division granted an Order to compel Curio Bioscience to provide security for legal costs in an infringement dispute against 10x Genomics relating to EP 2 697 391 B1.

10x Genomics argued that Curio’s financial instability, evidenced by its reliance on a single product line and statements made in earlier preliminary injunction proceedings, raised legitimate concerns about its ability to meet potential cost awards. The Claimant also highlighted the challenges of enforcing UPC cost decisions in the U.S., where Curio is based, due to the lack of a treaty ensuring recognition of such orders. Curio opposed the application, contending that Art. 69(4) UPCA only permits security orders against claimants, not defendants, and that r. 158.1 RoP should be construed narrowly to align with the UPCA. The Defendant also contended that its status as a U.S. company was irrelevant without specific evidence of enforcement difficulties and that the Court lacked sufficient grounds to determine the value of the case.

The Court held that r. 158.1 RoP applies to both Claimants and Defendants and that Art. 69(4) UPCA does not preclude such orders against Defendants. Nonetheless, the Court recognised that, in exercising its discretion, it must consider the claimant’s voluntary decision to litigate and carefully protect the defendant’s procedural rights, ensuring that the defendant retains a fair opportunity to present its case at trial.

After reviewing the evidence and arguments, the Court concluded that 10x Genomics’ concerns were well-founded and that imposing a security order would not unduly prejudice Curio’s procedural rights. It ordered Curio to provide EUR 200,000 in security for legal costs, payable within four weeks, either as a deposit or a bank guarantee. The Court set the value based on the scale of reimbursable costs, whilst acknowledging that the actual value of the dispute has not yet been set and that cost ceilings represent maximum recoverable amounts which could ultimately be further reduced based on the additional safeguards under Art. 69 UPCA including reasonableness and equity.

Although the Court granted Curio leave to appeal, it denied Curio’s request to delay the security provision until after appellate review, finding that such a delay would unjustifiably interfere with the Claimant’s interests.

INDONESIA

Indonesia amends patent law.   

Indonesia has amended its patent law statute bringing it more in line with TRIPS, and amending provisions relating to postponement of renewal fees, compulsory licencing and Bolar-type exemptions.