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.
Our latest edition - 09 February 2024 - is below:
STOP PRESS - IRELAND
High Court revokes BMS' compound patent for apixaban on the basis that it lacks plausibility following the guidelines as set out in G2/21 and that the patent is insufficient and obvious. The patent has previously been held invalid in the UK and Spain. More to follow in a future Irides Weekly Update.
Further clarity on trial listing considerations by Meade J in Generics & others v Astrazenca  EWHC 137 (Pat)
On 25 January 2024, Mr Justice Meade handed down a judgment following a hearing in which he had to decide whether a trial date should be listed in advance of a Case Management Conference (CMC) and if so, when the trial should be listed; the CMC itself was already scheduled for March 2024.
The parties attacking the patent in question requested that the trial date be listed in January 2025. In contrast, the patentee requested that decision on trial listing instead be deferred to the CMC in March 2024, with their major practical point on specific dates being that their counsel of choice had already done at least some work on this case and would be unavailable if the trial was listed for January 2025.
This was not an expedited case, or a case where the parties attacking the patent raised any issues of commercial urgency, such as those revolving around a product launch or expiry of a patent/SPC. Rather, they relied on the general desire for swift decisions which is captured in the Practice Statement of the Patents Court.
Meade J outlined the relevant regime to decide the trial listing application with reference to: i) “Practice Statement: Listing of Cases for Trial in the Patents Court”, issued by him in February 2022, and ii) the decision of Mellor J in Nokia v OnePlus  EWHC 2746 (Pat) at paragraph 4, which in fact fed into the Practice Statement.
They key considerations from this regime are:
- the Practice Statement’s general aim to bring patent cases to trial where possible within 12 months of the claim being issued; and
- the three scenarios outlined in Nokia v Oneplus, namely:
- if the parties are able to agree both the subject-matter of a trial, i.e. which patents are in issue and (b) the listing estimate, including pre-reading, court days and time off for preparing closing submissions, the Patents Court is likely to approve the obtaining of a trial listing even in advance of the full CMC;
- if there remains a relatively confined dispute over the listing estimate which can be dealt with by the court in a short hearing, the parties can approach the listing officer for a short hearing to determine such disputes, again prior to the full CMC. The court will give a trial listing provided it has a proper appreciation of the scope of the trial; and
- if the action for example and by contrast involves a number of patents and disputes over which patents should be considered in which trials and/or in which order, or the dispute is complex in some other way such as the effect of disputed directions on trial length, the trial listing may have to be determined at the CMC.
In considering these factors, Meade J found that whilst the Practice Statement outlines a general desire to bring cases to trial within 12 months, it is not an inflexible approach which can be applied to every case.
In this case, he found that co-operation between the parties was at a very early stage. In particular, there was a very significant difference in terms of their estimates of trial length and no agreement on the number of experts they would use. As such, he found that this case was not within either of the first two categories in Nokia v OnePlus because there was not a confined dispute over the listing estimate. In his view, he was not in a position to resolve the listing estimate, let alone to set a trial date and so this case fell within the third category in Nokia v Oneplus. Accordingly, he found that the listing should instead be determined at the CMC.
Meade J did caveat his decision by stating the decision of Mellor J in Nokia v OnePlus is not a statute and it is not to be applied inflexibly. For example, if there were a substantial dispute over the trial estimate in a context of very significant commercial urgency, the court would, in the right case, go ahead and seek to resolve it as best it could, and list a trial with perhaps a conservatively long estimate to make sure that the dispute could be resolved. He also commented that there may be situations where putting the listing off to the CMC, where the CMC is a long way away, could lead to prejudice to parties. However, with the CMC in this case not being that far away, and the lack of commercial urgency, these considerations did not apply here.
Warning letters based on foreign patents may be subject to Taiwan’s Fair Trade Act
In a decision that has recently been handed down, the Intellectual Property & Commercial Court (“IPC Court”) considered whether the Fair Trade Act would apply to warning letters based on foreign patents that allege infringement.
By way of background, in this action, the plaintiff and its customer received warning letters in Taiwan from the patentee, alleging that the chips used in certain products infringed US patents held by the defendant. These warnings were also extended to other customers in the US, suggesting infringement of additional US patents.
Art. 25 of the Fair Trade Act provides that "in addition to what is provided for in this Act, no enterprise shall otherwise have any deceptive or obviously unfair conduct that is able to affect trading order." The plaintiff contended that these actions breached Art. 25, as the patentee’s warning letters to non-manufacturers constituted deceptive or obviously unfair conduct that could affect trading order. The plaintiff claimed this was supported by the fact that both parties were direct competitors, with a significant overlap in their product applications and market presence.
The patentee submitted that the warning letters, sent by its US lawyer, targeted the US market, where the alleged patent infringements had occurred, and thus had no bearing on market competition in Taiwan.
The IPC Court held that the Fair Trade Act was applicable, as the relevant market under consideration would encompass Taiwan on the basis that the economic principle of competitiveness, which involves assessing the substitutability of the product or service in question, along with the geographical and potentially temporal dimensions of the market. Given the close relationship between the US branches and the Taiwan headquarters of the involved companies, as well as the global nature of the industry, the court concluded that the actions of the patentee could affect the plaintiff's market in both Taiwan and the US.
Compulsory licensing of patents for crisis management
On 2 February 2024, the European Parliament's research service announced a proposal to introduce a new regulation focusing on the compulsory licensing of patents during crises, aiming to balance rapid response needs with the protection of intellectual property rights. This proposal addresses the urgent deployment of patented technologies in scenarios like public health emergencies, ensuring that crucial innovations can be accessed and utilised without delay. It lays out a detailed legal framework for issuing compulsory licences, defining the conditions under which such licenses can be granted, their legal effects, and the procedural steps required for implementation. The proposal reflects the EU's commitment to navigating the complex interplay between public health and safety, and the incentives for innovation that patents provide, aiming for a solution that respects both public interest and the rights of patent holders. More information can be found here.
UPC case numbers and statistics update
The UPC has published an update on the case load of the Court since its start of operation in June 2023.
The UPC has now received a total of 217 cases, including:
- 83 infringement actions
- 24 standalone revocation actions
- 86 counterclaims for revocation (from 26 individual infringement actions, as each Defendant in an infringement case needs to file an individual claim for revocation), and
- 22 applications for provisional measures.
The Court of Appeal has received 11 appeals under RoP 220.1 and 13 appeals under RoP 220.2. The Court of Appeal has also received one request for discretionary review, two applications for suspensive effect and three applications for an order for expedition of an appeal.
The number of cases adopting English as the language of the proceedings is on the rise, now at 43%, but German remains the predominant language of proceedings at 47%.
The Munich Local Division continues to receive the most infringement actions (35%) followed by Düsseldorf (20%) and Mannheim (13%), and the Paris Central Division continues to receive the most revocation actions (83%), with The Munich Central division receiving the remainder. We wait to see what volume of cases the new Milan Central Division will receive, with an expected start date of June 2024. The Local Divisions of Copenhagen, Lisbon and Ljubljana are yet to receive their first case.
A detailed breakdown of the total caseload of the Court of First Instance is shown in the table below (from the UPC update here).