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 - 31 March 2025 - is below:

UK - STOP PRESS

High Court denies preliminary injunction.

Earlier today, the Patents Court denied AstraZeneca's request for a preliminary injunction against Glenmark in relation to its Forxiga product (INN: dapagliflozin). Shortly before the trial in this matter (which was heard from 10-20 March 2025 and where judgment is awaited), Glenmark informed AstraZeneca that it intended to launch its generic product on 17 March 2025. AstraZeneca therefore issued its application for a preliminary injunction to last until the Form of Order hearing following the Court’s judgment on validity. The application was heard by the trial judge, Michael Tappin KC sitting as a High Court Judge, who rejected the PI on the basis that damages would be an adequate remedy to AstraZeneca regardless of whether a price spiral occurred. He also found that damages would not be an adequate remedy for Glenmark given the difficulties in assessing the counterfactual.

The Judge refused permission to appeal. AstraZeneca are therefore seeking permission to appeal at the Court of Appeal, with that permission application set to be heard at 10.30 am on Monday 31 March 2025. Glenmark have agreed to stay off the market until that hearing.

UPC

Munich Local Division orders security for costs due to enforcement concerns in China.
(UPC_CFI_425/2024)

On 19 March 2025, the Munich Local Division ordered the claimant to provide security for costs to the defendants due to concerns about the enforceability of a costs decision in China.

The defendants relied upon the claimant having its registered office in China to argue that it was not sufficiently certain that a costs decision would be accepted and enforceable in China. It argued that this is the case in relation to German judgments and argued that it would be no easier in relation to UPC decisions.

Meanwhile, the claimant argued that the defendants had not provided any substantive arguments and that judgments from countries like Germany, Canada, the UK and several others have been recognised and enforced in China. It added that if the mere fact that a company has its registered office in a non-EU/non-EEA country was relevant, it would amount to discrimination.

The Judge Rapporteur agreed with this latter point but still ordered security for costs to be paid based on Court of Appeal case law (UPC_CoA_217/2024) which provides that the court should consider whether the financial position of the claimant gives rise to a legitimate and real concern that a possible order for costs may not be recoverable and/or the likelihood that a possible order for costs by the UPC may not, or in an unduly burdensome way, be enforceable.

The Court acknowledged the difficulties European courts (both national courts and those of the UPC) have faced in serving documents in China, despite its ratification of the Hague Service Convention, with many requests not being forwarded or being returned following an objection. The Judge Rapporteur reasoned, by way of analogy to this failure to fulfil its Hague Convention obligations, it had to be assumed that a UPC costs order would not be enforceable in China or, if it was, only in an unduly burdensome way.

SOUTH KOREA

KIPO restructures biotech examination division.

On 10 March 2025, the Korean Intellectual Property Office (KIPO) announced a restructuring of its examining division into five specialised biotech divisions composed of 120 examiners. The restructuring is part of KIPO’s efforts to expedite the examination of biotech patents, with “advanced technology” applications eligible for an expedited process which can reduce the examination process to as little as 2 months.

UPC

Paris Local Division maintains an infringement claim over non-UPC territories.
(UPC_CFI_702/2024)

IMC Créations brought infringement proceedings at the Paris Local Division against Mul-T-Lock France and Mul-T-Lock Switzerland. The defendants lodged a preliminary objection arguing that the UPC does not have jurisdiction in respect of the Spanish, British and Swiss designations of the patent.

The decision follows the CJEU’s ruling in BSH v Electrolux (C-339/22) in which the CJEU clarified that the Brussels I Regulation did allow for EU courts to retain jurisdiction over infringement claims concerning foreign patents, even in cases where validity had been raised as a defence. (More detailed discussion on BSH v Electrolux can be found on our website here.)

Mul-T-Lock argued that the CJEU’s decision creates a significant imbalance between the parties to the patentee’s benefit. The defendant is left having to bring many individual invalidity actions in various national courts of the jurisdictions in respect of which the single infringement case is brought. It added that the decision undermines the right to a fair trial, legal certainty and the minimisation of the risk of divergent decisions being issued. It further argued the decision undermines the sovereignty of non-EU countries.

The Paris Local Division held that, as a Court of a Member State of the EU, the UPC is bound to apply the law of the EU as interpreted by the CJEU. Therefore, there was no reason to not follow the CJEU’s judgment in BSH v Electrolux.

It found that the CJEU’s reasoning, based on the Brussels I Regulation, was transposable to the wording of the Lugano Convention. Therefore, it concluded that, because one of the defendants was domiciled in France, it had jurisdiction to hear the infringement actions in respect of these non-UPC territories. In relation to the Spanish and Swiss designations, it could suspend the proceedings pending the validity decisions of the national courts if there is a reasonable risk of invalidation. In relation to the UK designation, it was able to rule on the validity of that right but the ruling would only have an inter partes effect. 

It is likely that the UPC will need to contend with the post-BSH v Electrolux landscape in more cases going forward. For instance, as reported last week, the Mannheim Local Division had ordered the separation of infringement proceedings in so far as they related to the Polish, Spanish, Turkish and UK designations of the patent in suit so as not to delay the main action decision regarding the remainder of the designations whilst the CJEU’s decision was pending. It stands for this aspect of the dispute to now be picked up at a further hearing.

LAOS

European patent validation in Laos.

From 1 April 2025, it will be possible for new European patent applications to be validated in the Lao People’s Democratic Republic.  After validation, the European patents will confer essentially the same protection as other European patents granted by the EPO. Validation in Lao will only be possible for applications filed on or after 1 April 2025.

This development makes Lao the sixth EPO validation partner, alongside Morocco, Cambodia, Tunisia, Moldova, and Georgia.

UPC

Brussels Local Division considers Objection to Territorial Competence.
(UPC_CFI_582/2024)

The Brussels Local Division has held that it was the competent territorial jurisdiction to hear Barco NV’s (Barco) application for provisional measures against Yealink China and Yealink Europe (together Yealink).

In a preliminary objection, Yealink challenged the territorial competence of the Brussels Local Division, arguing that Barco had not, in accordance with Art. 33(1)(a) UPCA, sufficiently explained why the actual or threatened infringement has occurred or is likely to occur specifically in Belgium and not in another contracting state.  Instead, Yealink argued that proceedings should have been brought in the Hague Local Division (where Yealink Europe is domiciled) or in a Local Division where it is shown that Yealink itself commits infringing acts.

Art. 33(1) UPCA states that, amongst other things, applications for provisional measures should be brought before: “(a) the local division hosted by the Contracting Member State where the actual or threatened infringement has occurred or may occur…or (b) the local division hosted by the Contracting Member State where the defendant or, in the case of multiple defendants, one of the defendants has its residence, or principal place of business…”

The Court noted that Art. 33(1) UPCA allows an action to either be brought in the Local Division where the actual or threatened infringement has occurred or the Local Division where the defendant has its residence or principal place of business. In this way, Art. 33(1) UPCA establishes the possibility of parallel competence of Local Divisions and in the words of the court: "it is correct to state that Art. 33(1) UPCA makes forum shopping possible". There was therefore no requirement for Barco to bring its claim before the Hague Local Division where Yealink Europe was domiciled.

When considering “where the actual or threatened infringement has occurred or may occur” under Art. 33(1)(a) UPCA, the Court referred to the Court of Appeal in Aylo v Dish (UPC_CoA_188/2024) where it was held that Art. 33(1)(a) must be interpreted in accordance with Art. 7(2) Brussels I Recast Regulation to mean “the place where the harmful event occurred or may occur”. In this instance, the Court was satisfied that the harm complained of by Barco had occurred in Belgium.  

The Court therefore held it was a competent Local Division. However, the Court ultimately refused to grant the application for provisional measures as it held Barco had not satisfied the urgency requirement.