Irides: Weekly patent litigation update

This edition features updates from: The United Sates of America (USA), China, 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.
 

USA

Federal Circuit Court of Appeal reaffirms that the Moderna COVID-19 vaccine does not infringe the Alnylam patents.

On 4 June 2025, the Court of Appeal for the Federal Circuit (CAFC) upheld the District Court’s finding that Moderna did not infringe Alnylam’s Lipid Nanoparticles (LNPs) platform patents in view of a definition of a technical term included in the specification that narrowed its claims.

Alnylam brought two patent infringement claims in which it argued that Moderna’s mRNA-based COVID-19 vaccine SPIKEVAX infringed two of its US patents: US 11246933 and US 11382979, which relate to LNPs used for delivery of nucleic acids to the body.

In its first instance decision, the District Court found that Alnylam had acted as its own lexicographer regarding the term “branched alkyl” in the patents’ specification. The District Court held it had narrowed the definition of the term to an alkyl group in which one carbon atom in the group is bound to at least three other carbon atoms, as opposed to two in the “standard definition”. As a result, Moderna’s SPIKEVAX was held not to infringe the asserted patent.

The CAFC affirmed the District Court's decision on claim construction and non-infringement. In coming to its decision, the CAFC provided further detail of the key features which supported the finding that Alnylam acted as its own lexicographer:

• The relevant sentence appeared under the title “Definitions”;
• The term to be defined “branched alkyl” was set off in quotation marks;
• The sentence uses the term “refer to” which generally conveys an intent for that sentence to be definitional;
• Elsewhere in the Definition section, Alnylam used non-limiting terms that contrast with the “refer to” language at issue; and
• The inclusion of the phrase “unless otherwise specified” suggests that the rest of the sentence lays out a generally applicable rule or definition.

The CAFC also emphasised, from a policy perspective, the importance that applicants are held to a strict standard, as the public is entitled to rely on the provision of definitions. When a definition is expressly stated, there is a need for specificity to establish an exception.
 

CHINA

Supreme People's Court refuses application to transfer SEP action to Beijing Intellectual Property Court. 

Recent decisions from the Supreme People's Court of the People's Republic of China have upheld the decision of the Guangzhou Intellectual Property Court refusing permission to transfer Huawei's standard-essential patent (SEP) case against various MediaTek Defendants from the Guangzhou Intellectual Property Court to the Beijing Intellectual Property Court or to separate out the claims brought against the different defendants. 

MediaTek brought a jurisdictional challenge which was dismissed by the Guangzhou Intellectual Property Court. The Court emphasised that MediaTek's connection to Guangzhou, specifically Guangdong Province, was strong, making the Guangzhou Court the appropriate venue.

The Supreme People's Court upheld the first instance ruling. The Court confirmed that the evidence provided by Huawei initially established that Dongguan City, Guangdong Province, constituted an arguable territorial jurisdictional link. This was supported by evidence showing that the Defendants jointly promoted and sold infringing products through websites and exhibitions in Guangdong. The Court affirmed that the case constituted a special necessary joint litigation meaning that the claims against the different MediaTek entities should be heard together, notwithstanding that the MediaTek manufacturing entity and sales entity were in different jurisdictions within China.

The Supreme People's Court also dismissed an appeal regarding the jurisdictional objection that the evidence of a "trap purchase" was specifically designed to artificially create a jurisdictional link. The Court reiterated that when a manufacturer and seller are co-defendants in a patent infringement action, the Court has jurisdiction based on where sales take place.
 

UPC

Court of Appeal Order considers Suspensive Effect.
[UPC_CoA_70/2025]

On 26 May 26, 2025, the Court of Appeal dismissed Chainzone Technology (Foshan) Co, Ltd.'s (Chainzone) request to suspend an Order for provisional measures issued by the Vienna Local Division. In this infringement action, the patentee, Swarco, alleged infringement by Strabag who installed LED variable message signs purchased from Chainzone at the A12 sites (VKP Kundl, RFB Innsbruck) on behalf of a third-party company.

On 15 January 2025, the Vienna Local Division ordered Strabag to provide detailed information on the origin, distribution, and commercial customers of the infringing goods; submit purchase and sales documents as proof; destroy all infringing items in its possession and recall all sold infringing items at its own expense.

Both Strabag and Chainzone appealed this decision. Strabag's initial application for suspensive effect was rejected on 28 January 2025, and Chainzone filed a similar application on 15 May 15 2025. Chainzone sought to suspend the enforcement of the decision, arguing that the Local Division: had interpreted claim 1 in a manifestly incorrect manner; failed to apply basic rules on the burden of proof such that Swarco had not met its burden; drew technically untenable conclusions; and failed to take account of relevant facts/arguments and failed to provide sufficient reasons.

The Court of Appeal rejected Chainzone's application, reiterating that an appeal does not automatically suspend a lower court's order. Such an exception is only granted if the appellant's interest in maintaining the status quo outweighs the respondent's, or if the initial order is "manifestly erroneous" or its enforcement would render the appeal "irrelevant or purposeless.". The Court held that Chainzone had not sufficiently demonstrated manifest errors in the Order or that there was an infringement of fundamental procedural rights on which the decision was based Chainzone failed to explain how specific arguments would have led to a different conclusion by the lower court.

The Court of Appeal also held that the correctness of the claim interpretation and the proof of infringement would be thoroughly reviewed during the main appeal proceedings, not at this preliminary stage.
 

UPC

Tiroler Rohre patent found valid (as amended) and infringed, following the Local Division’s earlier expression of doubts as to validity.
[UPC_CFI_324/2024 & UPC_CFI_487/2024] 

On 6 June 2025, the Munich Local Division handed down its decision in Tiroler Rohre v SSAB, holding that an amended version of Tiroler Rohre’s patent, EP 2 839 038 (EP 038), is valid and infringed.

In March 2024, Tiroler Rohre (Tiroler) filed an application for a Preliminary Injunction (PI) against SSAB in the Munich Local Chamber. Tiroler later withdrew its application, after the Judges at the oral hearing expressed doubts as to the validity of its granted patent. Tiroler later filed infringement proceedings, and SSAB counterclaimed for revocation.

EP 038 concerns an improved pile driving tip which is placed on a cylindrical pile driver to assist in driving hollow piles into the ground to create stable foundations for structures.

During the revocation action, Tiroler maintained the validity of its patent in both its granted version, and in the alternative, with multiple auxiliary requests. EP 083, in its granted form was held not to be novel but the amended EP 083 in the form of auxiliary request 3, was maintained as valid. In coming to its conclusion on validity, the Court affirmed that the problem-solution approach is the correct assessment for inventive step and should be “applied first and foremost, insofar as this is possible…to increase legal certainty and further align the case of the UPC with the EPO and Boards of Appeal.”.

With regard to infringement, SSAB tried to argue that its pile tips did not infringe the amended EP 038 because the pile drives could not be attached to the bottom grooves in its pile tips (due to the wall thickness of SSAB’s piles); and because it was allegedly not technically feasible to design a pile end to match the dimensions of the base of the groove. SSAB also sought to rely on the fact that neither the piles it sold or other piles supplied on the market had dimensions that match that of its grooves.

The Court dismissed the relevancy of the argument that SSAB’s driven piles (or indeed other suppliers’ piles) did not have the appropriate dimensions because that concerned circumstances outside the scope of protection of the patent claim, which is focussed purely on the design of the pile-driving tip. If SSAB wants to assert that patent infringement is impossible due to circumstances outside the patent claim, it bears the burden of proof in accordance with Art 54 of UPCA. For the purposes of infringement, it is enough that Tiroler demonstrates the realisation of all the claim features of its patent. The Court was also not convinced of SSAB’s arguments that it would be “technically and functionally impossible” to manufacture driven piles with dimensions matching that of its pile tips.

The Court held the amended patent to be valid and infringed. SSAB now faces an injunction across all UPC Member States in which the patent is in force (and not just those where it sold its product). Tiroler was ordered to bear 20% of the costs of the dispute and SSAB 80% of the costs.
 

UPC

Periodic payment orders can only be enforced by panel decision
[UPC_CoA_233/2025]

On 4 June 2025, the Court of Appeal issued an Order clarifying the required court composition when considering requests for imposing periodic penalty payments when an Order for preservation of evidence is breached.

In August 2024, the Copenhagen Local Division, with a single Judge presiding, granted an application by Hybridgenerator for an order to preserve evidence and for inspection. The Order included a provision for potential penalty payments if the respondents failed to comply. The Judge also set the value of these periodic penalty payments. When the Respondents allegedly failed to comply, the Judge declined Hybridgenerator’s application to impose the payments.

Hybridgenerator appealed the decision, arguing that the decision not to impose penalty payments should have been made by a panel, not a single judge. The UPC Court of Appeal agreed with Hybridgenerator's position and distinguished between two stages concerning penalty payments:

1. Setting the value of periodic penalty payments (r. 354.3 RoP) - The Court confirmed that the initial setting of the value of periodic penalty payments can be done by a single Judge, such as the presiding Judge or a Judge-Rapporteur, as there is no explicit requirement in the rules for a panel at this stage.
2. Imposing periodic penalty payments (r. 354.4 RoP) - The Court ruled that when it comes to imposing penalty payments, the composition of the court must be a panel. The Court emphasised that r. 354.4 RoP explicitly states that such an Order must be made by the panel, on an inter-partes basis.

The Court of Appeal set aside the Copenhagen Local Division's order refusing to impose penalty payments, finding that it was issued without the correct court composition. The matter has been referred back to the Copenhagen Local Division for further consideration by a panel.