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 - 17 January 2025 - is below:

UPC

Local Division considers reasonableness of 55 auxiliary requests
(UPC_CFI_298/2023)

On 13 January 2025, the Munich Local Division considered a request by the Defendant (Nanostring) to dismiss an application filed by the Claimants (10x Genomics and President and Fellows of Harvard College) to amend a patent application, or alternatively to limit the number of auxiliary requests on file and order that the requests pursued should also be on file in the EPO proceedings.  

An oral hearing in the parallel opposition proceeding before the EPO is scheduled for 18-20 March 2025. The panel confirmed that it was appropriate that the UPC proceedings be stayed pending the outcome of the EPO hearing (as agreed by the parties and ordered by the Judge Rapporteur). That being the case, the panel ordered that the Claimants submit auxiliary requests within 20 days of the Opposition Division decision, so that the UPC proceedings to take account of that decision.

The Defendant argued that 55 auxiliary requests were excessive. The second claimant argued that this should not be considered in the abstract and it was relevant that 42 validity attacks had been raised in the revocation action. The Judge Rapporteur’s order to limit the number of auxiliary requests to a single digit was not maintained, and the panel left the question of the number of requests open for the time being. The panel considered that the reasonableness of the number of auxiliary requests depends on the scope of the counterclaim for revocation, the principle of fairness and the possibility to defend oneself against all counterclaims, and the decision of the Opposition Division. The number allowed will also affect the time period for the Defendants’ response.

UPC

Application for interest on costs denied.
(UPC_CFI_249/2023)

On 10 January 2025, the Munich Local Division issued its decision on costs arising out of proceedings between Edwards Lifesciences Corporation (Edwards Lifesciences), and Meril GmbH and Meril Life Sciences Pvt Ltd. (together Meril).

The parties had agreed out of court that Meril would pay Edwards Lifesciences an amount of EUR 195,000 concerning the costs of representation and EUR 11,000 concerning court fees arising out of the first instance proceedings between the parties, and a payment of EUR 38,000 in relation to the costs of the subsequent appeal. Edwards Lifesciences applied pursuant to r. 150 and 151 RoP for an order for reimbursement of these amounts plus interest at 5% above the respective base rate in line with s. 247 of the German Civil Code from the date of receipt of the respective application. Meril requested that the application be rejected insofar as it requested an award of interest, arguing that there is no legal basis for such a claim either in the UPCA or RoP.

The Munich Local Division agreed with Meril’s submission. Neither the UPCA nor the RoP provide for interest on fixed costs in cost assessment proceedings. The Court contrasted that position with r. 131.2.a RoP, which expressly includes a provision for claiming interest in the context of an application for determination of damages. The  Division, therefore, ordered that Meril pay Edwards Lifesciences a total of EUR 244,000, as agreed between the parties, and rejecting the remainder of Edwards Lifesciences’ request concerning interest.

NEW ZEALAND

Delay in bringing patent action held to be abuse of process.

On 22 October 2024, the Court of Appeal handed down its decision in proceedings between Anura Limited and Smuggler Marine Limited (together Anura) and Sealegs International Limited (Sealegs). Sealegs had initially pursued a copyright infringement claim in 2016 against Anura, obtaining an interim injunction against them and giving the usual cross-undertaking as to damages if the substantive claim should fail ultimately. At the time, Sealegs also said that it would include a claim for patent infringement and was given a deadline of June 2017 to do so. The patent claim was not, however, then introduced. Despite succeeding in its claim for copyright infringement in the High Court, ultimately the Court of Appeal set aside that decision and Anura subsequently sought to enforce the cross-undertaking and seek damages in respect of the original injunction. Sealegs then sought to defend itself by re-introducing its patent claim, saying that even though the copyright claim had ultimately failed, Anura had been infringing its patent and so was not entitled to any damages on the undertaking.

Anura applied to strike out this counterclaim as an abuse of process but failed to do so at first instance and so brought the present appeal

The Court of Appeal analysed the appeal in three parts, namely (i) on the facts could Sealegs have brought its patent case as part of the earlier proceedings?; (ii) if so, was it abusive to only do so now, considering the well-known discretionary test in Henderson v Henderson; and (iii) if it would generally be abusive to bring the patent claim now, did it make a difference that it was being raised by way of defence?

On those points, the Court concluded both that the case could have been brought earlier, and that it should have been to avoid being abusive.  The Court was not aware of any case law that had considered Henderson v Henderson in the context of an abusive defence, however, it noted that in the present case the patent claim was only appearing as a defence as a result of Sealegs initial offensive case.  The Court concluded overall, therefore, that the application to strike-out the patent aspects of the defence and counterclaim should be allowed.

SOUTH KOREA

Amendments to patent legislation including term extensions.

On 27 December 2024, various amendment bills relevant to patents and utility models were passed at the plenary session of the National Assembly. These will come into force 6 months after promulgation. 

In summary:

1. The number of patents eligible for  patent term extensions (PTE) under the amended Patent Act has been limited, as a patent holder must now choose a single patent in relation to a given product for which it will file a PTE application.
2. The maximum term for a PTE will be five years.
3. The total term of protection will not exceed 14 years from the date of market approval of the drug product.
4. The act of export will be an infringing act in relation to patents and utility models.
5. Violating a government order prohibiting the filing of an application in a foreign country or mandating maintenance of an invention or a utility model in secrecy for reasons of national defence will be subject to Penalties of up to five years of imprisonment or a fine not exceeding KRW 50 million (approximately £28,000); and a joint fine not exceeding KRW 100 million (approximately £56,000) for the corporation or representatives obligated to supervise that individual.