Irides: Weekly patent litigation update

This edition features updates from: The United Kingdom (UK), Brazil, the European Patent Office (EPO) and the Unified Patent Court (UPC).

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

High Court finds Alexion’s patent invalid for obviousness and not infringed by Samsung Bioepis and Amgen’s biosimilar eculizumab products.

Alexion owned EP 0 758 904 (EP 904), a basic patent which allowed an SPC to be obtained covering eculizumab. Following the priority date of EP 904, Alexion submitted an erroneous sequence for eculizumab to the Chemical Abstracts Service (CAS) in relation to eculizumab. Having appreciated that the original CAS filing was wrong, Alexion sought protection for eculizumab as such in the patent at issue, EP 3 167 888 B1 (EP 888), on the basis that it had never in fact formed part of the state of the art.

The claims of EP 888 are, in part, to the light chain sequence of “SEQ ID NO: 4”. SEQ ID NO: 4 is to eculizumab, but with a 22 extra amino acid leader sequence which is not present in any of the parties’ eculizumab products. The EPO had previously rejected Alexion’s proposed amendment to remove the 22 amino acid leader sequence from SEQ ID NO: 4.

Claim construction

Alexion argued infringement on a purposive construction, as the skilled reader of EP 888 would realise that the leader sequence would inevitably be cleaved off and not form part of the mature protein.

In a judgment handed down on 20 May 2005, Mr Justice Meade (Meade J) considered that the use of SEQ ID NO: 4 is a use of scientific language that would generally be expected to be precise, and the use of “consisting of” in the claim specifies exactly what must be present. Further, Meade J stated that the skilled person would understand that the patent was trying to claim something new. 

In addition, Meade J agreed with Alexion’s argument that the skilled person would believe eculizumab had greatly more obvious utility than an antibody with the additional 22 amino acids. However, he stated that it would not make sense to claim something that would not be valid as a matter of patent law, even if it was scientifically more desirable. Further, even if the skilled person thought that the patentee had an interest in claiming eculizumab as such, that would not necessarily mean that it would be claimed in EP 888. Instead, it could be claimed in a divisional and it was flagged that patents do sometimes claim things which are suboptimal or whose purpose is not entirely evident. Meade J asserted that this is not a licence to rewrite the claims.

Thus, the Defendants did not infringe EP 888. Alexion accepted that if the Defendants are right about claim construction, then the Patent is invalid. This was deemed a pragmatic concession because if there is no infringement then the claims are worthless. The Defendants also argued that the claims were invalid on several validity grounds.

Obviousness

Meade J opted to consider validity had it been ruled that the Defendants infringed EP 888 under Alexion’s claim construction. Following a finding that the claims were not anticipated by the prior art adduced, he went on to consider obviousness.

Meade J confirmed that the Defendants could not mosaic prior art with other non-CGK documents just because those other documents are ones that would be found from CGK sources given a specified goal to start from. This approach is tainted by hindsight and therefore the first obviousness attack failed. However, a subsequent attack relating to documents in combination (due to documents being cross-referenced) was deemed to render EP 888 invalid.

Relevance of the UPC proceedings

Interestingly, Meade J noted that the UPC Court of Appeal’s decision was consistent with his decision on claim construction. Meade J asserted that this decision fortified his conclusion but was not necessary to it.

Non-technical issues

Meade J stated that it was not necessary for him to decide Samsung’s arguments on abuse of process, judicial estoppel or approbation and reprobation given his findings on infringement and invalidity. He considered that these legal points were not fully and sufficiently argued, in light of which he was unwilling, in this case, to decide the point and create a new judge-made route to revocation of otherwise valid patents.
 

BRAZIL

Brazilian Court grants patent term extension.

In a judgment which will be welcomed by rightsholders, the Brazilian Federal Court (the BFC) has, for the first time, ruled in favour of a patentee seeking an adjustment to the term of its patent, recognising that the Brazilian Patent and Trademark Office’s (the BPTO) delay during the examination process was unreasonable.

The action was brought by Genzyme Corporation and The Regents of the University of Michigan. The patent in issue (the Patent) concerned eliglustat hemitartrate, the active pharmaceutical ingredient in Cerdelga® which is used to treat Gaucher’s disease. The application for the Patent was filed in 2005, but the BPTO only began its substantive examination in 2014, with grant of the Patent not taking place until February 2018. At the time of grant, the law in Brazil provided a minimum term of protection of 10 years from the date of grant, meaning that the Patent would not expire until February 2028. However, the Supreme Court’s seminal decision of May 2021 ruled that this provision of the law was unconstitutional and that patent terms should be limited to 20 years calculated from the date of filing. So, for the Patent, this would mean expiry in 2025.

In this case, the BFC agreed with the patentee that it was entitled to a term adjustment and found the BPTO’s delay excessive. As a result, the Court ordered that the term of the Patent should be extended until February 2028. Interestingly, the Court considered its judgment did not contradict the Supreme Court ruling because the Supreme Court ruling applied prospectively and therefore should not be applied to the Patent, which was in force at the time it was handed down. However, those familiar with the Supreme Court decision will recall that the Court decided its ruling should apply retrospectively to pharmaceutical patents. As such, while this decision is undoubtedly important and encouraging for patentees, who for many years have had to suffer the consequences of the BPTO’s delays, it seems almost certain that it will be subject to challenge.
 

EPO

EPO Technical Board of Appeal confirm that Chatbots are no substitute for the skilled person.

On 15 April 2025, the Technical Board of Appeal of the EPO (TBA), handed down its decision concerning a patent for spinning machine rotors. During the oral proceedings, the patentee sought to rely on answers generated by ChatGPT in support of its construction of various technical terms. However, the TBA was clear that ChatGPT's responses were irrelevant. Moreover, the TBA noted that “the interpretation of the claim centres on the understanding of the specialist”. The TBA acknowledged that the use of Chatbots and AI was increasing but that this did not justify the assumption that the answer received from these sources, which the TBA noted may depend on the context and way in which the question is formulated, necessarily correctly reflects the understanding of the skilled person in the respective technical field at the relevant time. The TBA noted that the literature in the relevant field is a better source of evidence of how technical terms are to be interpreted by the skilled person. The TBA didn’t go so far as to say that Chatbots and AI have no part to play but the decision is clear that they are not a substitute for the skilled person.
 

UPC

Court of Appeal rejects application for separation of proceedings due to confidentiality concerns
(UPC_CoA_423/2025).

The Claimant brought an action for infringement against Hisense, TCL and LG before the Mannheim Local Division.

Hisense, TCL and LG lodged a request for separation of proceedings, arguing that they would have to disclose sensitive supply chain information in order to defend themselves against Corning’s allegations. Exchange of such confidential information amongst the competing companies had to be restricted to avoid potential conflicts with EU competition law. The Court of First Instance rejected this request, and the Defendants made a request for discretionary review under r. 220.3 RoP.

The request for discretionary review was deemed unfounded by the Court of Appeal. It was noted that although separation of the proceedings can prevent other defendants from obtaining access to the confidential information, this was not the only option available to the Court. Instead, the Court may order that access to confidential information can be restricted to specific persons under Art. 58 UPCA and r. 262A RoP. Therefore, there was nothing fundamentally wrong with the Court’s decision not to separate the proceedings and no misuse of its discretionary power. Whether to separate proceedings was a matter to be determined based on the circumstances of the case, and the assessment should include considerations of procedural economy.
 

UPC

Milan Court of First Instance orders inspection of patented device and allegedly infringing product at Claimant’s site under Art. 53(f) UPCA
(UPC_CFI_513/2024).

The Milan Court of First Instance ordered, pursuant to r. 170.1(c) and 170.2(f) RoP and Art. 53(f) UPCA 2025, that the device falling within the scope of the patent together with the allegedly infringing device should be brought to the oral hearing scheduled for 4 June 2025. The Claimant stated that transporting the patented agricultural machine to the Court for the oral hearing would be impossible due to its weight and proposed that inspection of the machine equipped with the patented tool be carried out at one of its sites near the Court.

The Court confirmed that Art. 53(f) UPCA has a scope of application that covers a series of activities detailed in the RoP, and extends beyond them in a broader and more comprehensive manner. According to Art. 53(f) UPCA, the Court has the ability to compare the patented and allegedly infringing devices by viewing their dynamic functionality, not limited to a mere inspection. If a party offers to exhibit a device in accordance with r. 170.1(c) and submits a video of its operation to the court in accordance with r. 170.1(d), the court may also order dynamic experiments and comparative tests based on the principle established in Art. 53(f) UPCA.

Thus, it was ordered that inspection of the patented device and the allegedly infringing device should take place at the Claimant’s site in the morning of 4 June 2025, be videoed and form part of the oral hearing, with the oral hearing continuing at Court in the afternoon.
 

UPC

Court of Appeal allows appeal on issue of Security for Costs despite the action being devoid of purpose
(UPC_CoA_328/2024).

On 12 May 2025, the Court of Appeal of the UPC handed down a decision in the context of the long running dispute between Ballinno B.V. and Union des Associations Européennes de Football (UEFA) and its technology provider Kinexon GmbH.

The Hamburg Local Division of the UPC previously rejected a Preliminary Injunction (PI) application brought by Ballinno against UEFA and Kinexon in relation to the use of goal technology at the European Football Championships (EFC), which were held in Germany in the summer of 2024, as reported previously here. The basis for the PI rejection was that Ballinno had not acted with the necessary urgency, nor had it sufficiently proved its case on infringement and Ballinno was ordered to pay the costs of the proceedings. Prior to the PI being refused, Ballinno had also been ordered to provide security for costs. Ballinno appealed the PI decision and the costs orders but then subsequently withdrew its PI request on the basis that the EFC were over and therefore it’s urgent interest in securing a PI had significantly diminished.

Nevertheless, Ballinno maintained its requests to set aside the costs order along with the order for security for costs.

The Court found that Ballinno decided not to pursue its request for a PI, not because it was forced to do so, but as a consequence of the risks inherent in its litigation strategy. The Court went on to state that where a party builds its case entirely on a single event or window of time where there is an alleged patent infringement, in this case a particular sporting event, then that party must accept an inherent risk in its procedural strategy that its interest falls away once the event is over and that its requests must be rejected for lack of urgency. The scheduling of the 2024 EFC was well known to Ballinno along with the risk that any alleged infringement would have ended before its PI application had been finally determined and Ballinno could have timed its application accordingly. It was Ballinno’s decision to withdraw its PI request prior to a final decision and to rely solely on the European Championships for its urgent interest. As such, when the championships ended, its action had become devoid of purpose, and it must therefore be considered the unsuccessful party and be held liable for the costs of the proceedings under the general rule of Art. 69(1) UPCA.

Nevertheless, the Court ruled that Ballinno’s appeal against the security for costs order was admissible given that it was brought together with an appeal against the PI Order and that this admissibility was not affected by the subsequent withdrawal of the PI request. The parties had until 22 May to confirm they did not require a further oral hearing so the Court can make a final costs adjudication based on the written submissions.