Irides: Weekly patent litigation update

This edition features updates from: The United Kingdom, The Unified Patent Court (UPC) and Brazil.

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.
 

UK - STOP PRESS

Court of Appeal Overturns and Re-Decides FRAND Royalty in Optis v Apple.

In a major judgment addressing the valuation of standard-essential patent (SEP) licences, the Court of Appeal has overturned the first-instance decision and significantly increased the global FRAND (fair, reasonable and non-discriminatory) rate for Optis’ telecommunications patent portfolio in a long-running dispute between the parties.

The key points from the decision are as follows:

• Return to Comparables-Based Assessment: The trial judge’s replacement methodology involving averaging lump sums across a set of (mostly Apple) licences was held to be legally and methodologically flawed. The Court reinstated a comparables-based valuation method, consistent with Unwired Planet v Huawei and InterDigital v Lenovo. It confirmed that both ad valorem and dollar-per-unit (DPU) royalties can be FRAND, depending on context.
• Court of Appeal Determines the FRAND Rate to be $0.15 per unit: The Court of Appeal concluded that it was in a position to determine the FRAND rate and declined to remit the matter. It determined that the FRAND royalty rate for the Optis portfolio is $0.15 per Apple unit, relying on unpacked DPU values derived from a selection of what it deemed the most reliable comparables: the Optis-Google licence, and the licences between Apple and each of Ericsson, InterDigital, Nokia and Sisvel. The resulting $0.15 figure lay between the higher rate implied by the Google licence and the rates suggested by the others, striking a balance between avoiding under-compensation and avoiding excessive royalty burdens. As a cross-check, the Court noted that this rate implied a total royalty stack of around 6.3% of Apple’s ASP at the relevant time ($625) and 8.4% of Google’s ASP ($470).
• $502 Million Lump Sum: The Court applied the $0.15 DPU to all of Apple’s past sales and projected future sales from 2021–2027. A 10% discount was applied to projected future sales, resulting in a total lump sum royalty of $502 million (excluding interest), covering both past infringement and the forward-looking licence. This is approximately 10x the first instance lump sum amount ($56.43M).
• EDTX Judgment Considered: The Court accepted that Optis’ earlier $300m damages award from the Eastern District of Texas in respect of five of its US patents should not result in double recovery, but considered it difficult to adjust its valuation in light of the methodologies adopted by the parties. The least-worst solution in the circumstances was for the US judgment (if upheld) to be treated as a floor for the royalties payable under the UK court determined licence (i.e. in this scenario Optis retains the US award and Apple pays the balance of the total amount determined to be FRAND).
• Non-Financial Terms and Anti-Suit Clause Revised: The Court also held that certain non-financial licence terms imposed by the first instance judge were procedurally unfair - particularly a clause requiring Optis to withdraw or abandon all foreign proceedings. The Court restored a more neutral licence form, with final terms to be determined following written submissions if not agreed between the parties.

This judgment reinforces the centrality of comparables in FRAND valuations, provides clarity around the treatment of foreign proceedings in global SEP litigation, and reaffirms the UK’s leading role in determining SEP licensing terms.
 

UK

Patents Court holds AstraZeneca’s dapagliflozin patent invalid.

In a judgment handed down on 28 April 2025, Deputy Judge Michael Tappin has found AstraZeneca’s patent and corresponding SPCs to the SGLT-2 inhibitor dapagliflozin invalid for both lack of plausibility and a lack of technical contribution.

With the generics’ classical obviousness and the direct SPC attacks having been abandoned, this focused judgment compared the disclosures of the patent in suit (the Patent) to that of the closest prior art – namely, a related BMS PCT application (WO 128). WO 128 disclosed a series of Markush formulae, with even the most preferred Markush formula encompassing millions of compounds, one of which is dapagliflozin (although this is not the subject of WO 128’s examples). By contrast, the Patent claimed only dapagliflozin.

Lack of plausibility

As many readers will be aware, the law on plausibility was considered in the ruling of the UK Supreme Court in Warner-Lambert v Actavis (pregabalin) in 2018. In summary, this ruling held that, to be plausible, the patent must disclose some reason for supposing that the assertion of efficacy in the claim was true. The Judge, bound by precedent, applied the Warner-Lambert standard, although he also sought to make findings of fact to enable a higher court to apply T116/18’s “legitimate reason to doubt” test if this is deemed appropriate. In applying Warner-Lambert, the Judge determined the technical effect under consideration through the three step approach from the Court of Appeal in FibroGen v Akebia. 

Although both WO 128 and the Patent provided an assay to determine the SGLT-2 inhibitor activity of the disclosed compounds, neither document disclosed results of the assay. Whilst the Judge acknowledged that on numerous occasions the Patent referred to dapagliflozin as an SGLT-2 inhibitor, he rejected AstraZeneca’s characterisation of these descriptions of dapagliflozin as an SGLT-2 inhibitor as a verbal statement of an experimental result.

Despite noting that Warner-Lambert allows a patentee to rely on a priori reasoning for an alternative basis for plausibility, the Judge found that the Patent did not disclose enough to make it plausible that dapagliflozin would have an in vivo effect on blood / plasma glucose (such that it could be used as an experimental tool) or would treat diabetes.

Lack of technical contribution

The Judge confirmed that a patent may be invalid in circumstances where the claimed invention is a mere arbitrary selection from the prior art, and rejected the submission that a failure to establish classical obviousness of the selection means that the selection cannot be arbitrary.

As AstraZeneca did not advance a case that the technical contribution of dapagliflozin was in fact any different from that of any other compound in WO 128, the Judge held that dapagliflozin was an arbitrary selection from WO 128.

The Judge then rejected the argument that dapagliflozin none-the-less provided a technical contribution over WO 128 because the Patent made it plausible that dapagliflozin was an SGLT-2 inhibitor which reduced blood / plasma glucose in vivo and was useful to treat diabetes. He held that he did not see how making something plausible can in itself be a technical contribution, but also considered that, even if available, this argument failed on the facts.

Concluding that the Patent was invalid, the Judge noted that no judge wanted to revoke a patent for a breakthrough medicine such as dapagliflozin but that he had to assess the Patent based on its disclosure.

At the hand down of the judgment, the PIs were maintained pending the consequential hearing.
 

UPC

Paris Local Division limits finding of infringement to French territory
[UPC_CFI_440/2023]

On 24 April 2025, the Paris Local Division of the UPC issued a permanent injunction in France against Laser Components SAS (Laser), a French entity belonging to a European distribution group that markets UVC LED chips.

An infringement action against Laser in relation to some of its LED chip models was initiated by Seoul Viosys Co Ltd (Viosys) in December 2023. Viosys relied on European Patent EP 3 404 726 (the Patent), which was in force in France, Germany, the Netherlands and the United Kingdom and protects a structure for a UV light emitting device. The manufacturer of the infringing chips, a Korean company named Photon Wave Co., Ltd (Photon Wave), was an intervening party.

Viosys relied upon: (i) a private expert opinion from an independent testing laboratory (in response to a questionnaire from Viosys) to support its technical infringement case and (ii) a report of purchases made via the Lasercomponents.com website to demonstrate the infringing acts.

Laser argued that the expert opinion could not support the technical infringement case, but the Court found no evidence of bias and considered that its own interpretation of technical terms used in the Patent and the questionnaire were consistent with those adopted in the expert opinion.

A permanent injunction was requested to cover France, Germany, the Netherlands and the United Kingdom but the Court found that Viosys had failed to demonstrate acts of infringement in any jurisdiction other than France. Website extracts relied on by Viosys indicated that the Defendant (being the French entity in a European distribution group) only sold products in France. Despite this “sectorisation” of sales areas, only one test purchase had been made and was delivered in France and no other entities in the distribution group had been included in the action. The Court commented that the claim to infringement in the United Kingdom may be admissible in light of the CJEU’s decision in BSH v Electrolux (see further commentary on this judgment here), but the factual evidence presented by Viosys had failed to demonstrate the existence of infringing acts by the Defendant in the United Kingdom.

BRAZIL

Anti-trust investigation of Ericsson’s conduct relating to 5G SEPs continues

A recent decision from the Administrative Council for Economic Defence (CADE) means that Ericsson’s standard essential patent (SEP) battle is not yet at an end in Brazil.

Telefonaktiebolaget L.M. Ericsson (Ericsson) initiated a number of patent infringement cases against Motorola Mobility Comércio de Produtos Eletrônicos LTDA (Motorola) and Lenovo Tecnologia Brasil LTDA (Lenovo) in Brazil in 2023 in relation to its 5G SEPs.

In late 2024, Motorola/Lenovo requested that CADE investigate possible anti-trust violations by Ericsson but the parties entered into a licensing agreement shortly after and withdrawal of the CADE application was requested.

Despite Motorola/Lenovo reaching a private agreement with Ericsson on pricing, the Commissioner decided that CADE should continue its investigation. He pointed to a risk that Ericsson had conducted first-degree price discrimination (charging each licensee the maximum they are willing to pay) against the public interest. The Commissioner referenced Ericsson’s practice of offering licenses on a case-by-case basis in bilateral negotiations, other licensed companies not paying amounts equivalent to Ericsson’s global licence, Ericsson’s apparent failure to adopt an objective parameter for determining price and the initiation of multiple litigations to influence negotiations.

The Commissioner specifically considered if CADE should intervene in patent law, and distinguished CADE’s responsibilities regarding SEPs and typical national patent rights. He concluded that SEPs had the potential to become a barrier for market entry and inhibit innovation, and Ericsson’s conduct therefore had the potential to negatively impact not only Motorola/Lenovo but also consumers.

The decision also noted that SEP holders could not require that licensing takes place worldwide, noting that patents were national rights, and highlighting diverging judgments between jurisdictions.