Irides: Weekly patent litigation update

This edition features updates from: the European Patent Office (EPO), the United States of America (USA), India 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.

EPO

Enlarged Board of Appeal issues decision in G 1/23 (Solar cell), concluding that all analysable features of a product put on the market form part of the prior art, regardless of whether or not the product is reproducible.

The Enlarged Board of Appeal (the Board) of the European Patent Office (EPO) has issued its long-awaited decision in case G 1/23, addressing whether a commercially available product must be reproducible to form part of the state of the art under Art. 54(2) EPC. This referral arose from an appeal of T 0438/19 where the patentability of a solar cell encapsulant was challenged based on prior use of a polymer ENGAGE 8400 that could not be exactly reproduced.

The Board held that all analysable features of a product made available to the public before the filing date of a European patent application form part of the state of the art, even if the composition or internal structure of the produce cannot be reproduced by the skilled person. The decision emphasises that introducing a reproducibility requirement would amount to a legal fiction, potentially excluding a wide range of physically available materials from the prior art and leading to absurd consequences. Additionally, any technical information about the product that was made publicly available before the filing date is also considered prior art, regardless of whether the product itself is reproducible.

This landmark ruling removes ambiguity around the prior art status of complex but accessible products and will have important implications for patenting strategies, particularly in industries dealing with complex products such as polymers and materials science.   

Whilst crucial for novelty, this decision is also highly relevant to the assessment of inventive step. Following the EPO’s problem and solution approach, the Board acknowledged that starting from a non-reproducible product may be less likely in some cases, especially if the skilled person cannot improve or modify it due to lack of manufacturing knowledge. However, this is a factual question relevant to whether the skilled person would actually choose such a product as the closest prior art, not a legal bar to its inclusion in the state of the art, and this its relevance in inventive step analysis. If certain technical properties of a product can be determined, those properties are available to the skilled person and may be used in assessing obviousness. Therefore, features that can be measured, characterised, or observed from a marketed product are valid in assessing whether a claimed invention is obvious, regardless of whether or not they are reproducible.

USA

USPTO sees a surge in IPR denials following guidance from USPTO Acting Director.

The USPTO has introduced a notable shift in its approach to discretionary denials of inter partes review (IPR) petitions, placing new emphasis on a factor referred to as “settled expectations”. This development signals a broader interpretation of the USPTO’s authority to deny IPRs.

On 6 June 2025, the USPTO denied several IPRs (IPR2025-00363 to IPR2025-00378) on the grounds that one of the patents had been in force for over a decade and the petitioner had long been aware of them, having cited the earliest patent in an information disclosure statement for their own patent application. The decision reasoned that allowing review at this stage would disrupt the “settled expectations” of the patent owner, thereby introducing a new discretionary factor.

This reasoning was further applied in IPR2025-00409, where the USPTO denied institution of an IPR on a patent that had been in force for nearly eight years. The decision concluded that the mere passage of time was sufficient to establish settled expectations, stating “in general, the longer the patent has been in force, the more settled expectations should be” and that due to patent publications being public “actual notice of a patent or of possible infringement is not necessary to create settled expectations”. The petitioners failed to provide compelling reasons why an IPR would be an appropriate use of USPTO resources.

In another denial, IPR2025-00322, Tessell challenged the validity of a patent assigned to Nutanix.  Tessell was founded by two of five inventors named on the challenged patent and subsequently hired two other inventors of the patent. Nutanix argued that “after Nutanix sued the [Tessell, they] assert[ed] that the same ’336 patent that the inventors previously touted and profited from is invalid... which is directly counter to the well-settled expectations of the parties...”. The decision noted that Nutanix's arguments were persuasive, and concluded “it is not an appropriate use of Office resources where the inventors applied for and were issued a patent, but… now advocate for its unpatentability.”

These decisions mark an evolution in how the USPTO balances procedural fairness and administrative efficiency. Petitioners must clearly demonstrate why an IPR serves the public interest and why the timing of their petition is justified. Simply lacking actual knowledge of a patent may no longer be enough to avoid denial.

INDIA

Court Rejects Patent Claim Over Known Compound Derivative.

The Delhi High Court has upheld the Indian Patent Office’s decision to refuse Zeria’s patent application on the grounds of lack of inventive step and the prohibition under s. 3(d) Indian Patents Act (PA), which bars patents for new forms of known substances unless they demonstrate enhanced therapeutic efficacy. Zeria had sought a patent for a novel intermediate compound used in drug synthesis, claiming novelty due to a specific chemical substitution.

The Court found that the compound did not involve an inventive step, as the modification would have been obvious to a skilled chemist. More significantly, the Court also refused the appeal on the basis that the claimed compound was a mere derivative of a known compound and the patent application did not demonstrate therapeutic benefits as required under s. 3(d) PA. Zeria, in submissions to the Controller of Patents, had argued the benefits of the intermediate compound including “reduced reaction time, higher isolation yield and reduced amount of impurities”. However, Zeria also stated that “as the claimed compound is an intermediate, it is not feasible to demonstrate the therapeutic effect of the claimed compound”.

The Court, following Novartis AG v. Union of India, (2013) 6 SCC 1, confirmed that improvements in manufacturing processes or physical properties are insufficient for the purposes of s. 3(d).  Instead, it is necessary to demonstrate therapeutic benefits. By dismissing the appeal, the Court reaffirmed India’s strict provisions relating to s 3(d).

UPC

Court of Appeal confirms settlement at the request of the parties
(UPC_CoA_46/2025 & UPC_CoA_48/2025)

The Court of Appeal issued a decision on 23 June 2025 confirming a settlement between Arkyne Technologies S.L. and Plant-e Knowledge B.V./Plant-e B.V. in a patent dispute over EP 2 137 782, a patent covering plant-based microbial fuel cell technology. The dispute had drawn attention as one of the first major UPC cases to address infringement by equivalence.

The Hague Local Division had previously ruled in favour of Plant-e, finding that Arkyne had infringed the patent and rejecting Arkyne’s revocation claim. This led Arkyne to file two appeals, one against the infringement ruling and another against the rejection of its revocation counterclaim.

However, before the written procedure in the appeal process was completed, both parties reached a confidential settlement. Plant-e, on behalf of both parties, submitted applications to the Court of Appeal requesting confirmation of the settlement and confidentiality of its contents under r. 365.2 and 262.2 RoP. The Court agreed to confirm the settlement under r. 365.1 RoP, making it enforceable as if it was a final court judgment.

Regarding the confidentiality request, the Court ordered that only a redacted version of the agreement be entered into the public register. The full contents of the settlement therefore remain confidential and it is only if a request for access is made by a third party under r. 262.1(b) RoP that the request for confidentiality from the public will be decided.

In addition to confirming the settlement, the Court also addressed a request from Arkyne for reimbursement of court fees. Under r. 370.9(b)(i) RoP, a party is entitled to a 60% refund of court fees if a case is settled before the closure of the written procedure. Since Plant-e’s deadline to file its statement of response was 24 June 2025, after the settlement was reached, the written procedure had not yet closed. As a result, Arkyne’s request for reimbursement was granted.