Irides: Weekly patent litigation update

This edition features updates from: The United Kingdom (UK) 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 - STOP PRESS

Preliminary injunction granted in dapagliflozin proceedings pending appeal.

As previously reported here and here, following the High Court's revocation of AstraZeneca's dapagliflozin patent, a Preliminary Injunction (PI) was granted pending the Form of Order hearing and AstraZeneca obtained permission to appeal the High Court's judgment in the main action.

On 14 and 15 May 2025, HHJ Hacon heard the parties on the issue of whether the PI should be maintained pending the appeal on the merits. However, in light of a letter from the NHS indicating that they would not resist AstraZeneca reinstating its original price if they were forced to temporarily lower it to compete upon generic launch but ultimately their monopoly was restored, HHJ Hacon adjourned the PI hearing so that further submissions on this issue could be made.

A further hearing was held on 28 May 2025. Prior to this hearing, HHJ Hacon received a second letter from the NHS, confirming the NHS' previous position, but clarifying that the NHS did not intend for the original letter to be treated as evidence nor weighed in the balance for or against any of the parties. Whilst at the time of writing, the approved written judgment has not been handed down, in an ex-tempore judgment (given orally in court) HHJ Hacon granted AstraZeneca an interim injunction against the generics in the proceedings, which will remain in force until the Court of Appeal decision on the merits. We will provide a full update on the reasoning once the approved judgment is available.

All the generics (Glenmark, Teva, Generics and Sandoz) sought permission to appeal HHJ Hacon’s decision, which he refused. If the generics wish to appeal, they will now need to apply for permission from the Court of Appeal directly.

The hearing of AstraZeneca’s appeal on the merits is scheduled to take place on 25 and 26 June 2025 and it is expected that a decision will be handed down on that appeal within a few weeks (at most) of that hearing.
 

UPC

Siemens requests for security of costs as claimant’s registered address outside of the UPC, is rejected. 
(UPC_CFI_758/2024)

On 21 May 2025, the Düsseldorf Local Division rejected Siemens’ request for security of costs in the ongoing Hologic v Siemens proceedings. The defendants sought security for their costs in respect of both the infringement claim and revocation counterclaim on the basis that enforcing a potential costs order against the claimant would be unduly burdensome given the claimant’s registered place of business was in the USA, which has not ratified any international agreement recognising foreign judgments.

The Court considered the defendants were, as a matter of principle, permitted to submit a request for security in respect of the revocation counterclaim as well as the infringement claim and that establishing that “enforcement of a cost order is unduly burdensome” would be a ground for granting such request. However, the Court rejected the request because the defendants had not met their burden of proof, in particular evidence was required of the applicable foreign law and its application which had not been provided.
 

UPC

Paris Local Division revokes juice-squeezer module patent. (UPC_CFI_758/2024)

On 23 May 2025, the Paris Local Division dismissed Hurom's claim for infringement against NUC Electronics, and revoked the Dutch, French, German and Italian parts of the patent in suit as unconditionally and conditionally amended. The Local Division also ruled on an infringement claim in the non-UPC territory of Poland.

Added matter

When considering whether Hurom's claim amendments added matter, the Local Division applied the Court of Appeal's test from Abbott v Sibio. The Court considered that features may be used to illustrate the working of an embodiment that are not an essential part of the invention. The removal of such features (when compared to the disclosure of a patent application) does not constitute an intermediate generalisation and does not add matter.

Territorial scope of the UPC

Hurom additionally requested that the Court rule on infringement in Poland on the basis of the Polish designation of the patent as granted. In its Statement of Defence, NUC objected that the UPC lacks jurisdiction to rule on injunctions and remedies in Poland. Despite Hurom protesting that this objection should have been raised as a Preliminary Objection pursuant to r. 19 RoP (and so was made out of time), the Court found it was admissible on the basis that the territorial scope of decisions under Art. 34 UPCA fell outside of the matters governed by preliminary objections under r. 19 RoP.

The Court noted that the Polish part of the patent in suit cannot be revoked by the UPC nor amended, but that the claim concerning alleged acts of infringement on Polish territory is admissible in light of the decision handed down by the CJEU in BSH v Electrolux (previously reported here). However, Hurom did not meet the burden of proof for the alleged infringement in Poland (relying only on availability of the relevant websites throughout Europe and an allegation that the first defendant’s turnover covered all of Europe) and so this claim was dismissed. 
 

UPC

The Hague Local Division considers preliminary objections regarding jurisdiction. 
(UPC_CFI_163/2024)

On 23 May 2025, the Hague Local Division made its order in respect of a number of preliminary objections made by the defendants in Genevant v Moderna.

The claim was filed against fifteen different Moderna entities based both within and outside the UPC territories (including Moderna Netherlands, Spain, Norway, Poland, UK, US). The different Moderna defendants made different preliminary objections contesting the jurisdiction of the UPC.

First, Moderna argued that the UPC does not have jurisdiction in respect of the claims against Moderna Spain, Poland and Norway as those entities had not infringed the patent within the UPC territory. The Court considered it had jurisdiction against those defendants as the claimants had sufficiently substantiated alleged infringement in those defendants’ home countries jointly with Moderna Netherlands, which provided jurisdiction under Art. 8(1) Brussels I Recast Regulation (and the equivalent provisions of the Lugano Convention in respect of Norway). The defendants did not substantiate any objection regarding jurisdiction over any of the other defendants based outside of the territory of the UPC, e.g. Moderna US, and so the Court considered those defendants submitted to the UPC’s jurisdiction.

Second, Moderna argued that the Hague Local Division does not have jurisdiction in respect of the defendants which are neither domiciled nor accused of infringing acts in the Netherlands. The Court also dismissed this objection as it considered that under Art. 33(1)(b) UPCA: (i) the multiple defendants have a “commercial relationship” with Moderna Netherlands as they belong to the same group of companies and have related commercial activities aimed at the same purpose; and (ii) the action relates to the same alleged infringement.

Finally, Moderna argued that the UPC does not have long-arm jurisdiction for infringing acts outside of the UPC territory allegedly committed by entities that are not based within the UPC territories (e.g. Moderna US and UK). The Court held that this is an issue to be dealt with in the main proceedings.
 

UPC

Paris Central Division determines it can revoke a European Patent in a single UPC Member State. 
(UPC_CFI_198/2024)

As part of its decision on 28 May 2025, the Paris Central Division considered the issue of whether the UPC can revoke a European Patent (EP) in a single UPC Member State, rather than across the territory of all UPC Member States where the EP has effect.

The Court referred to Art. 34 UPCA which states that decisions “shall cover … the territory of those Contracting Member States for which the [EP] has effect” and considered that this provision defines the possible scope of UPC decisions but does not prevent the UPC limiting revocation to certain states only. In this case the claimant had requested revocation for Germany only. The Court decided that, in line with Art. 76(1) UPCA, it should not award more than the parties had requested. As such it made a limited finding on invalidity, revoking only the German part of the EP in suit.