The English Patents Court has upheld the validity of EP (UK) 2 229 744, which relates to an efficient polling system for a wireless communications network and has has been declared as essential to the LTE 4G telecommunications network standard. The Court also held that the patent is infringed by wireless telecommunications networks which operate in accordance with the relevant standard. Of particular interest in this case are the Judge’s findings in relation to whether simply the date, or the date and time, of the filing of a priority document should be considered when assessing the relevance of a potentially novelty-destroying piece of prior art.
The patent is part of a portfolio acquired by Unwired Planet from Ericsson. Unwired Patent alleged that Huawei and Samsung infringed the patent by manufacturing and selling equipment which complies with the relevant standard. The defendants denied infringement and counterclaimed for invalidity of the patent on the grounds that it was not entitled to priority, lacked novelty and was obvious in the light of the prior art.
Sun Pharmaceutical Industries (Europe) B.V. v. Novartis AG and Novartis Pharma GmbH, District Court of The Hague, The Netherlands, 25 November 2015, Case file number: C/09/469148 / HA ZA 14-770.
In January of this year the Court of Appeal of The Hague in preliminary injunction proceedings held Sun liable for indirect infringement of Novartis’ Swiss type claim on (in short) the use of zoledronic acid in a specific dosage range, form and regime for the treatment of osteoporosis, despite the fact that Sun was marketing its generic zoledronic acid under a skinny label on which the patented indication was carved out.
In these proceedings on the merits the District Court ruled otherwise. The District Court established that the claims which have been invoked by Novartis are ‘purpose limited process claims’ which comprise the distinctive element ‘in the preparation of a medicament’. In the chain after the supply of the medicament by Sun no one is actually applying the claimed process, i.e. ‘the preparation’.
Novartis’ reasoning that applying the claimed invention, ‘manufacturing’ should be considered the same as providing a purpose to the medicament (product) only holds ground if a Swiss type claim is considered as ‘a purpose limited product’, which is true for EPC 2000 claims, but not for the claims as invoked by Novartis in these proceedings. Therefore the Court rules that there is no indirect infringement.
The court grants Novartis the opportunity to further substantiate its claim for direct infringement and Sun is allowed to respond and to substantiate its defense to the alledged direct infringement claims of Novartis.
Saab Seaeye Limited -v- Atlas Electronic GmbH and ECS Special Projects Limited and Adrian Dann and Blueprint Design Engineering Limited (t/a Blueprint Subsea) and James Barratt, High Court (Patents Court), Mr Justice Mann, 4 November 2015
The English Patents Court has partially upheld the validity of two patents, GB 2 482 576 (GB 576) and GB 2 483 861 (GB 861), owned jointly by Atlas Electronic GmbH and ECS Special Projects Limited, which relate to underwater mine clearance operations. The Court went on to hold that certain claims of both patents had been infringed by Saab Seaeye Limited (“Saab”) with its Ballista product.
Saab brought an action for revocation against the two patents. It alleged that GB 576 was invalid on the grounds that the patent lacked novelty over an earlier device in development in the early 1990s (the ‘SeaSting’) and/or GB 2 234 203 A (BAe), obvious over BAe and/or SeaSting, and that it was insufficient. The patentees made an unconditional application to amend the patent, so the invalidity case proceeded on the basis of the amended claims. The patentees alleged that claims 1 and 9 were infringed.
Warner-Lambert Company LLC v Sandoz GmBH, Sandoz Limited and Lloyds Pharmacy Limited, England and Wales Patents Court (Arnold J), London, UK, 4 November 2015, Neutral Citation Number:  EWHC 3153 (Pat)
This judgment concerned an application for an interim injunction restraining Sandoz from any further dealing in its full label generic pregabalin product and Lloyds from dispensing the quantities of that product that it had acquired prior to the grant of a temporary restraining order by Birss J. The interim injunction was granted by Arnold J and will remain in force until determination of infringement at an expedited trial or final determination of validity of the patent in suit in proceedings between Warner-Lambert on the one hand and Actavis and Mylan on the other.
Enlarged Board of Appeal, decision in case Art. 23 1/15 – Request for a proposal of removal from office
Background Pursuant to Article 23 (1), 1st sentence, EPC, a member of the Boards of Appeal may not be removed from office during his term of 5 years, “except if there are serious grounds for such removal and if the Administrative Council, on a proposal from the Enlarged Board of Appeal, takes a decision to this effect.”
Read the entire post here. Read the decision here.
S.A. Ethypharm v. Alkermes Pharma Ireland Limited, Court of Appeal, Paris, France, 3 November 2015, No. 184/2015, with thanks to Raphaëlle Dequiré-Portier, GIDE LOYRETTE NOUEL, for sending in the case, together with a head note and translation in English
In this decision, the Court of Appeal has reversed the First Instance decision of 21 December 2012 and held that Claim 9 was invalid as it was a treatment method.
Claim 9 is written as follows: “9. Use of particles consisting essentially of a drug substance with an adsorbed surface modifier on the surface, in an amount sufficient to maintain an average particle size less than 400 nm or a pharmaceutical composition of the latter for the preparation of a drug in order to accelerate the onset of action after administration to a mammal, provided that the drug substance is not naproxen or indomethacin.”
AstraZeneca AB v. Teva Pharma Belgium NV and AstraZeneca AB v. Sandoz NV, Court of Appeal Brussels, Belgium, 10 November 2015, and 9 November 2015, Case No. 2015/KR/20 and 2014/KR/232, with thanks to Carl De Meyer, Liesbeth Weynants and Carina Gommers, HOYNG ROKH MONEGIER, for sending in the cases and a head note in English
The appellate court of Brussels reconfirmed that AstraZeneca is still entitled to injunctive relief notwithstanding the revocation of AstraZeneca’s patent in first instance. The court considered that AstraZeneca made it sufficiently plausible that its appeal in the revocation action will succeed and therefore granted the preliminary injunction including a recall of Teva’s currently commercialized products.
In a decision rendered last week by the same appellate court, AstraZeneca obtained a favourable decision against Sandoz with respect to AstraZeneca’s blockbuster sustained-release formulation of quetiapine (Seroquel XR®) to treat schizophrenia and related diseases.
Read the AstraZeneca/Teva decision (in Dutch) here. Read the Astrazeneca/Sandoz decision (in Dutch) here.
Our book on the saisie-contrefaçon, often considered as the reference, is now available in trilingual version, German, English and French. Published in French in the Référence collection of the legal publisher Dalloz (3rd edition 2013), Saisie‑contrefaçon, the book, now translated in the other two main legal languages in Europe, presents in 1,600 pages the complete overview of the law, case law and practice of this tool for obtaining evidence of an infringement.
The Patent Box, established with the Legge di Stabilità 2015 (Law December 23, 2014 n. 190) is a irrevocable and optional regime of detaxation, of quinquennial duration (starting from January 1, 2015), concerning the incomes deriving from the direct or indirect exploitation as well as from the license of the intangibles. The current text of the Italian Patent Box, for its substantial and subjective extent, represents an unicum in the European and, probably, the worldwide landscape.
Teva UK Limited v Boehringer Ingelheim Pharma GmbH, High Court of England and Wales (Morgan J), London UK, 21 October 2015, Neutral Citation Number:  EWHC 2963 (Pat).
Boehringer Ingelheim’s proposed amendments to claims 5 and 6 of European Patent (UK) 1 379 220 (the “Patent”) for the use of a hydroxypropylmethylcellulose ("HPMC") capsule of a certain moisture content for the delivery of tritropium bromide in a dry inhaler was refused as the amended claims were not inventive. In particular, the specification of certain moisture levels in the claims was arbitrary and could not save the claims where the suggestion to use HPMC capsules was in itself obvious.
The Patent covers capsules to be used in a dry powder inhaler for the purpose of delivering tiotropium bromide to patients with chronic obstructive pulmonary disease (“COPD”) or asthma. Teva commenced a revocation action in June 2014 primarily on the basis of lack of inventive step. During the course of proceedings Boehringer applied for permission, pursuant to section 75 of the Patents Act 1977, to unconditionally amend the Patent claims.
SISVEL Wireless Patent Portfolio v. Qingdao Haier Group, Düsseldorf Regional Court, 3 November 2015, Cases 4a O 93/14 and 4a O 144/14, with thanks to ARNOLD RUESS, for sending in a summary in English
On 3 November 2015, the Düsseldorf Regional Court has issued two judgments against Haier Deutschland GmbH and the Haier Europe Trading SRL, entities of Chinese Qingdao Haier Group, and ordered them to cease and desist from, render account on and to pay damages for past infringements (Cases 4a O 93/14 and 4a O 144/14). The judgments are based on the German parts of the patents EP 0 852 885 and EP 1 264 504 and belong to the SISVEL Wireless Patent Portfolio. The judgements can be, but have not yet been appealed.
On July 25, 2015, the Official Spanish Gazette published the new Patent Act, Act 24/2015, which will replace the existing Act 11/1986. Since its promulgation –motivated at the time by Spain’s adhesion to the European Economic Community and the need to adapt its obsolete patent legislation to the needs imposed, among others, by the European Patent Convention-, the 1986 Act has merely undergone certain modifications, despite the substantial changes in the national economic and business landscape.
There was an urgent need to update the legislation and adapt it, once again, to the new international environment. On this occasion, given the magnitude of the required changes, the legislator considered it appropriate to draft a new law, although in view of its importance and the need of further regulatory development, the entry into force will be deferred until April 1, 2017.
Some of the aspects of the new patent regulation that could stir considerable interest are briefly explained here below.
Merck Sharp & Dohme Limited v Ono Pharmaceutical Co. Limited & another, and Bristol Myers Squibb Company, Ono Pharmaceutical Co. Limited & another v Merck & Co. Inc. & another, High Court (Patents Court), Mr Justice Birss, 22 October 2015
The UK Patents Court has upheld the validity of Ono’s patent EP (UK) 1 537 878 (under which BMS is an exclusive licensee), which concerns antibodies to the PD-1 receptor for the treatment of all cancers.
Ono and BMS alleged that Merck’s anti-PD-1 antibody pembrolizumab (Keytruda), which it proposes to market as a treatment for unresectable/metastatic melanoma, infringed the patent. Merck accepted that if the patent was valid, its product fell within the scope of the claims. Merck raised a wide variety of attacks on the patent, including added matter, insufficiency, loss of priority, anticipation and obviousness. Ono admitted that if priority was lost, the claims were invalid. Ono further stated that it would not seek an injunction in the UK if its claim to infringement was successful.
Interestingly, the judge held that plausibility forms part of the law of novelty as part of the enablement assessment. In this case, the question was whether the prior art plausibly enabled the claimed therapeutic effect. This issue is frequently raised in cases concerning second medical use claims where there is an issue of whether the disclosure of the therapeutic effect in the prior art is sufficient to be novelty destroying. Birss J’s approach can be contrasted with the approach of Arnold J in Hospira v Genentech  EWHC 1796 (Pat) in which this issue was instead dealt with by asking whether the claimed therapeutic effect was properly disclosed in the prior art (i.e. you must know from the prior art that the claimed therapeutic effect will be obtained).
Other interesting aspects of the judgment include how the judge dealt with Merck’s plausibility attack (which was raised under the heads of priority, sufficiency and AgrEvo obviousness) and his analysis of whether the invention was ‘obvious to try’.
ZTE Netherlands B.V. v. Vringo Infrastructure Inc., District Court The Hague, The Netherlands, 28 October 2015, Case No. C/09/481474 / HA ZA 15-100 with thanks to Ruprecht Hermans, Richard Ebbink, Gaëlle Béquet and Jan Pot, Brinkhof, for sending in the judgment, as well as a summary and a translation thereof in English
Since 2012, ZTE and Vringo have been involved in litigation on a number of patents, which are part of a portfolio of ca. 500 patents which Vringo purchased from Nokia. EP 119 is one of those patents. In the Netherlands, litigation started in 2014 when the Dutch customs stopped several shipments of ZTE equipment. Vringo attached part of these goods, alleging infringement of EP 119. The preliminary relief Judge of the District Court The Hague refused to lift this attachment, inter alia because he considered the outcome of nullity proceedings on EP 119 too uncertain.
In 2007, EP 119 was upheld by the TBA in opposition proceedings initiated by Qualcomm. It has also been the subject of infringement proceedings in Germany, where in 2013 the Landgericht Mannheim refused to stay the infringement proceedings pending the nullity proceedings before the Bundespatentgericht as it considered the chance of revocation insufficient.
EP 119 claims a method for transmitting a certain sequence of symbols, and is according to Vringo essential for the UMTS standard. More specifically, it pertains to the situation in which a UMTS base stations transmits so-called synchronization information on the synchronization channel when a functionality called time-switched transmit diversity, or TSTD, is in use.
Symposium on the requirement of inventiveness; Patent warming – is the inventive step analysis to blame?
Following the defence of the dissertation ‘The Evolution of the Inventiveness Requirement’ by Lodewijk Pessers (see below), the Institute for Information Law (IViR, University of Amsterdam) organizes an international symposium on the inventiveness requirement in patent law and, more in particular, its relationship with the global growth in patent grants. Speakers include Professor Rochelle Dreyfuss (NYU) and Professor Theo Bodewig (Humboldt University, Berlin).
The symposium, bearing the title “Patent warming – is the inventive step analysis to blame?”, will be held on Saturday 19 December 2015 (11.00 a.m. – 4.30 p.m.) at the Agnietenkapel (University of Amsterdam), Oudezijds Voorburgwal 231, Amsterdam. Entrance is free.
Maker Vijaykumar Shivpuje contacted the EPLAW Patent Blog to present the Android based mobile application called 'VPATAPP'. This app is available free of cost on Android Play Store.
The app provides links for
1. Worldwide patent blogs from different regions like USA, Europe, BRIC, Latin America, Africa, and Asia-pacific including India; 2. Worldwide full time LLM/Masters/ Graduate courses in IP; 3. Journals in the area of Intellectual Property Law especially patents; 4. Weekly or monthly official gazettes or registers published by different patent offices across the world; 5. Patent classification systems; 6. Patent search websites available from patent offices across the world; 7. Updated full text patent acts of different countries as published by the patent offices or WIPO.
The blog list also includes EPLAW Patent blog (described as as eppatent law blog, which error will be corrected in the next version).
The current version is a trial version and the makers welcome all suggestions for improvement: email@example.com.
Richard Perry v F H Brundle (a private unlimited company), Betafence Limited and Britannia Fasteners Limited, England and Wales High Court (HHJ Hacon), London, UK, 25 September 2015, Neutral Citation Number:  EWHC 2737 (IPEC)
The Defendants, F H Brundle and others, brought an action to strike out a claim in its entirety or for a summary judgment in their favour. They also applied for an extended civil restraint order (‘CRO’) against the Claimant, Mr Perry, or, in the alternative, a limited CRO.
HHJ Hacon struck out the proceedings on two grounds, although one would have sufficed. The first was that the cause of action vested in the Official Receiver, not the Claimant. The second was that the claim was res judicata. HHJ Hacon also considered whether he could grant a CRO, which he eventually did, discussing the jurisdiction of the IPEC in the process, as well as the circumstances in which one ought to be granted.
Academy of European Law (ERA), Annual Conference on the EU Unitary Patent 2015, Brussels, 26 November 2015
Just before the Unitary Patent Court starts functioning, this one-day conference will offer an update on the most recent political and legal developments regarding the Unitary Patent in the EU and the rules of procedure applicable before the Unitary Patent Court.
Pending adoption of the 18th draft of the rules of procedure Result of the public consultation on the fee structure for the Unified Patent Court Adjusted proposals from the EPO on renewal fee levels for Unitary Patent with unitary effect Implications of the Unitary Patent system for large and small industries Deadlines with the Unified Patent Court:being prepared for changes in legal practice and in internal organisation of law firms
More information may be found on the ERA website here.
Teva Nederland B.V., Teva Pharma B.V. and Teva Pharmaceuticals Europe B.V. v. AstraZeneca AB, preliminary decision by the The Hague Court PI judge acting as replacement judge for the District Court North Netherlands, 22 September 2015, Case No. 15/809
Teva requests that an ongoing descriptive seizure conducted by AstraZeneca is lifted. The judge in PI proceedings agrees.
Earlier, in the course of settlement discussions relating to alleged infringement on EP '877, AstraZeneca had promised to give prior notice to Teva should it wish to invoke a different patent against Teva's DuoResp Spiromax 320µg/9µg. AstraZeneca later obtained a leave for a descriptive seizure based on EP '506 in order to obtain evidence of infringement by Teva with its DuoResp Spiromax 320µg/9µg and DuoResp Spiromax 160µg/4.5µg. AstraZeneca did not refer to earlier mentioned obligation to give prior notice in its request for leave to seize and commenced the seizure without prior notification. Teva requested the seizure to be lifted.
AstraZeneca argued (i) that a descriptive seizure falls outside the scope of the obligation as the obligation does not relate to conservative measures and (ii) that the obligation does not relate to the DuoResp Spiromax 160µg/4.5µg. The PI judge disagrees and rules that the descriptive seizure is an invoking of a different patent by AstraZeneca. Further, Teva was deprived of its defences against infringement that it could have brought forward should AstraZeneca properly have informed the Court.
The Local Division Hamburg of the Unified Patent Court is being introduced to the public this Wednesday, 7 October 2015
After a presentation of the first insights into the project Local Division Hamburg by Katja Günther, state secretary of the ministry of justice of Hamburg, Professor Dr. Winfried Tilman, Of Counsel at Hogan Lovells will explain the 18th and final draft of the UPC rules of procedure. He has drafted it as one of the German members of the UPC Expert Group.
Finally, experts from different areas of the patent law practice will talk about the current draft. Next to Professor Tilmann, Beate Schmidt, president of the German Federal Patent Court, Dr. Volkmar Henke, patent lawyer and Partner at Eisenführ Speiser and Michaela Opfer, project manager of the Local Division Hamburg, will discuss the following questions:
- Which divisions are competent for which actions? - How does the opt-out/opt-in work? - What will be the language of the proceedings? - What are the stages of the proceedings and which time limits have to be kept in mind? - What are the consequences of the UPC for the competence of the national courts?
Fontem Holdings 1BV and Fontem Ventures -v- Ten Motives Limited and 10 Motives Limited, UK Patents Court (Mr Justice Norris), 2 October 2015
The Claimants (Fontem) has commenced patent infringement proceedings against a number of defendants, including 10 Motives, Nicocigs, JT International SA and Zandera. The infringement and related revocation actions are due to be heard together in May 2016. The actions all involve electronic cigarettes, a rapidly growing market.
10 Motives applied to the Patents Court for summary judgment of the infringement claim against them, alternatively a stay of the infringement claim pending the outcome of an opposition at the EPO. Summary judgment in patent proceedings in the UK has traditionally been difficult to obtain, given that the Court must decide what the words of the patent mean to the skilled person, regarding which expert evidence is usually relied upon. In this case the judge decided that Fontem’s infringement claim was “well arguable” and one for which expert evidence would be needed. He therefore declined to grant summary judgment.
Hymmen Industrieanlagen GmbH v. Teijin Aramid B.V., District Court of The Hague, the Netherlands, 26 August 2015, Case number 461854 / HA ZA 14-329
Teijin is involved in the production of yarn that consists of fibres suited for application in e.g. bullet- and fireproof garments. Hymmen inter alia manufactures presses used for the produc-tion of various materials. Teijin and Hymmen entered into a collaboration, which led to vari-ous patent applications being filed by Teijin.
The present proceedings were initiated by Hymmen and concern, in short, a claim for entitlement by Hymmen to all rights derived from the patent applications. The District Court rejects the claim for entitlement because Hymmen failed to substantiate that Teijin or its employees did not have the relevant (technical) knowledge and/or because the subject matter of the patent(s) in question is deemed not inventive.
VDV R&D BVBA, VDV Beton N.V. and Grobeton N.V. v. Swaans Trilbetonbedrijf B.V., Swaans Beton Weert B.V., Swaans Materieel B.V. and Swaans Quality Force B.V., District Court The Hague, 9 September 2015, Case No. HA ZA 14-911.
Concrete grids. VDV R&D holds a European patent for “method for the realisation of concrete grids for stable floors for cattle and the like”. The court upheld the patent notwithstanding invalidity challenges based on lack of inventive step, insufficiency and added matter/extension of scope of protection.
The patent contains only method claims. Part of the claimed method is that grooves are applied to the concrete after partial curing and removal of the concrete grid from the mould. Swaans had argued that the patent was obvious in light of a German patent application (DE 224) disclosing a prefabricated concrete grid with grooves and a British application (GB 303) disclosing a process by which grooves are applied to the soft surface of concrete that is still in the mould.
Summaries of selected national patent law cases in the three official languages
"This edition of the Case Law from the Contracting States to the EPC 2011 – 2014 contains summaries of 99 selected decisions from 11 different EPC contracting states, handed down during that time. They have been selected for their significance regarding substantive patent law, and are arranged according to topic and country of provenance. Aspects of harmonisation, patents subject to dispute in several jurisdictions, as well as some institutional issues were also taken into account in making and presenting it. Decisions referring to the case law of the boards of appeal or engaging with the EPO's approach in a significant way were also included."
Rotorelemente ("Die member"), Bundesgerichtshof, Germany, 12 May 2015, Case No. ZR 47/13
The Federal Supreme Court held in its very important decision “Rotorelemente” (“die member”) that a claim has always to be constructed in light of the description and the drawings. This holds also true for a claim which is logical in itself and therefore does not seem, at first sight, to need a profound claim construction, in taking into account drawings and description.
In the case that had to be decided, the claim was very clear in itself, but was in complete contradiction to the description, it was contradictory to the only example and to all drawings. This was due to an error that occurred at the end of the granting procedure, where two features in the claim were swapped wrongfully.
In the first instance decision, the Federal Patent Court had revoked the patent, since it was of the opinion that with a claim being consistent and logical in itself, there is no possibility to construct it in the sense given by the description and the drawings. The Federal Supreme Court overruled the decision saying that every patent claim needs to be constructed in light of the description and the drawings, even if, at first sight, the wording is clear und unambigous. In doing so, the Federal Supreme Court held that two features of the patent claim have to be constructed in a way that the wording of the claim has to be amended, following the sense of description and drawings.
“Thickening polymer I” and “Thickening polymer II”, Bundesgerichtshof, Germany, 5 May 2015 and 7 July 2015. Case No's X ZR 60/13 and X ZB 4/14
The Federal Patent Court Bundesgerichtshof decided in its decision “Verdickerpolymer I” (Thickening polymer I, docket n° X ZR 60/13) that in order to destroy novelty of a patent, it is not necessary that all possible combinations of the claim were known in the state of the art. The patent claimed a composition of an associative thickener, a surfactant and water. The associative thickener should be selected from polyurethanes, polyesters, modified cellulosics, poIyester-urethanes, polyether-alpha olefins and polyether-polyols; the surfactant had to be selected from anionic and non-ionic surfactants and mixtures thereof, the rest being water.
In the state of the art, there was known a composition of a polyurethane thickener and a non-ionic surfactant, in the amounts claimed in patent claim 1, with the remainder being water. The patentee argued that only one possible combination falling under the patent claim was known in the state of the art, whereas all other possible combinations were not known. However, he did not disclaim a combination of a polyurethane, a non-ionic surfactant and water.
The Contracting Member States promised to the users of the new Unified Patent Court (UPC) that the proceedings and judgements will ensure highest quality. To this end, the Agreement on the Unified Patent Court (UPCA) requires that judges should comply with highest standards in patent litigation. Unfortunately, representatives do not need to fulfil this standard, as the new draft for the European Patent Litigation Certificate (EPLC) confirms.
The UPC will establish a completely new system for civil law proceedings. It will be the first court on a European level that decides about claims between private parties. Therefore, it will not only harmonize partly national procedural rules, but also needs to harmonize completely different legal traditions. This will be a challenge to every lawyer that is in charge of any matter at this new court.
Aventis Pharma S.A., May & Baker Ltd. & Sanofi Aventis S.A. v. Hospira Productos Farmacéuticos y Hospitalarios S.L., Supreme Court (Civil Chamber, 1st Section), Spain, 14 April 2015, Docket No. 1809/2013.
The Spanish Supreme Court definitely ruled and put a term to the patent litigation brought in 2010 against Hospira by Aventis, together with its exclusive licensee May & Baker and sublicensee Sanofi-Aventis, in relation to the former’s Docetaxel generic medicinal products authorized for and marketed in Spain. In its Judgment of 14 April 2015, the Supreme Court confirmed Hospira’s contributory infringement of claims 5 to 8 of Aventis’ EP 827745 patent (as limited within the Court proceedings under Art. 138(3) EPC).
Response by Association of the Members of the Boards of Appeal of the European Patent Office (AMBA) to letters by EPLAW, CCBE and epi concerning the proposal for the institutional reform of the Boards of Appeal of the European Patent Office
"The Association of the Members of the Boards of Appeal of the European Patent Office (AMBA) has noted with great interest your letters dated 4 June 2015 (EPLAW) / 15 May 2015 (CCBE) / 25 June 2015 (epi) concerning the proposal for the institutional reform of the Boards of Appeal of the European Patent Office as set out in CA/16/15.
"The institutional reform of the BoA, as a pivotal part of the European patent system, is an important and delicate undertaking. It must correctly balance many legal aspects as well as improve the perception of independence of the BoA as a final instance judicial body (for refusals and revocations)."
In Spain, jurisdiction over civil patent disputes in the first instance is exclusively held by the so-called Commercial Courts (Juzgados de lo Mercantil). These Courts, which have been in operation since 1 September 2004, were actually instituted on the occasion of a comprehensive reform undertaken the previous year on the former insolvency law, by assigning to these newly-created Courts exclusive competence on whatever legal issues that could arise in relation to insolvency and bankruptcy matters.
However, in addition to the above, it was decided to also give exclusive competence to Commercial Courts regarding several other fields of law, namely in the area of transport, maritime law, the general terms and conditions of contracting, mortgage registry entries, antitrust law, unfair competition, advertising, copyright and industrial property (and, consequently, patent disputes). Thus, for our purposes, the result was that patent litigation cases in Spain are now heard in the first instance by Courts which actually are only “semi-specialized” in this area of law.
H.Lundbeck A/S, Lundbeck España, S.A. v. Laboratorios Cinfa, S.A., Mylan Pharmaceuticals, S.L., Actavis Spain, SA. et al., Supreme Court (Civil Chamber, 1st Section), Spain, 29 April 2015, Docket No. 556/2013.
By means of a Judgment issued on 29 April 2015, the Supreme Court definitively ruled in the Escitalopram patent litigation brought by Lundbeck in Spain against a pool of generics companies, thereby confirming the earlier findings from the lower courts, which had declared the non-existence of patent infringement.
The Judgment contains important teachings concerning the assessment of patent infringement under the doctrine of equivalents and the applicable standard of obviousness for the alternative which replaces an element of the invention, which the Supreme Court sets in the predictability of the variant. It further analyses the inapplicability of the test of inventive step to appraise the obviousness of the allegedly equivalent alternative.
EPLAW comments to the Public Consultation on the Rules on Court fees and Recoverable costs of UPC
Further to the public consultation on the proposed Rules of procedure regarding court fees and recoverable costs under the UPC Agreement, the EPLAW Board in consultation with a working group of EPLAW members from various nationalities prepared comments which were sent to the Preparatory Committee on 29 July 2015.
Smith & Nephew plc v ConvaTec Technologies Inc., England and Wales Court of Appeal (Kitchin, Briggs, Christopher Clarke LJJ), London UK, 30 July 2015, Neutral Citation Number:  EWCA Civ 803
The Court of Appeal has stayed both an injunction and an order for delivery up or destruction pending the outcome of two decisions in relation to European Patent (UK) 1,343,510 (the “Patent”), firstly Smith & Nephew’s application for permission to appeal to the Supreme Court and, secondly, an EPO opposition.
ConvaTec’s Patent covers a process for the silverisation of fibres in wound dressings. The Patent has been the subject of a series of decisions, initially in relation to validity (as reported on this Blog here and here) and subsequently in relation to infringement, including an application for a declaration of non-infringement (as reported here and here). The Court of Appeal decision on infringement overturned Birss J’s judgment as to the scope of a numerical range in the relevant claim of the Patent and concluded that Smith & Nephew infringed the Patent. The resulting form of order could not be agreed by the parties and an application was made to determine various issues, including permission to appeal and a stay of the injunctive relief.
Coloplast A/S v. Medical4you B.V., District Court The Hague, preliminary injunction proceedings, The Netherlands, 14 August 2015, Case No. C/09/480452 / KG ZA 15-9
Catheters. The judge in preliminary injunction proceedings deviates from a recent decision by the Opposition Division. According to the judge there is a serious, non negligible chance that the patent will be revoked in proceedings on the merits or in appeal proceedings at the EPO because of lack of inventive step. The patent lacks inventive step regardless of the fact that two consecutive steps are needed in order to come to the claimed invention.
Rovi Guides, Inc. v Virgin Media Limited & Ors., England and Wales Court of Appeal (Longmore, Lewison, Floyd LJJ), London UK, 14 July 2015, Neutral Citation Number:  EWCA Civ 781
The Court of Appeal has affirmed the decision of Mr John Baldwin QC, sitting as a deputy judge of the Patents Court, to revoke Rovi’s patent which describes and claims features which allow a user to pause live television or video on demand (“live feed”) and resume watching it on a different device (a process known as “relocation”). At first instance, the patent had been held to be obvious over a single piece of prior art, the Digital Audio-Visual Council 1.3.1 Specification (DAVIC). Rovi appealed the decision in relation to the live feed relocation claims (the “live feed claims”), but not the video on demand relocation claims.
Teva UK Ltd & Teva Pharmaceutical Industries Ltd v LEO Pharma A/s, England and Wales Court of Appeal (Sir Robin Jacob, Kitchin and King LJJ), London, UK, 28 July 2015, Neutral Citation Number:  EWCA Civ 779
This is an appeal against Birss J’s finding that two LEO patents were invalid for lack of inventive step. The key claims of the patents were for a combination of the active pharmaceutical ingredients calcipotriol and betamethasone, alongside the non-aqueous solvent Arlamol E. The patents cover Leo’s Dovobet Ointment product, a dermal treatment for psoriasis.
The Court of Appeal held that Birss J had erred in his application of the law on the assessment of inventive step, thereby allowing the Court of Appeal to revisit the assessment de novo. It is worth noting that in the absence of an error of principle, the English appellate Courts will be very cautious in differing from the first instance judge’s evaluation of the question of inventive step as it is considered a kind of jury question (see the House of Lords judgment in Biogen v Medeva at paragraph 54). Sir Robin Jacob (with whom Kitchin and King LJJ agreed) returned to the bench for this appeal and delivered the leading judgment.
Wobben Properties GmbH v. Siemens plc & Ors, UK, High Court (Patents Court), Birss J, 20 July 2015, Neutral Citation Number:  EWHC 2114 (Pat)
Wobben’s patent in suit concerned a method of operating a pitch-controlled wind turbine. The inventive concept of the claimed invention was to allow operation of wind turbines at wind speeds above the ordinary shut down wind speed (the speed at which a wind turbine is otherwise compulsorily shut down in high winds) so as to extend the operating window and potentially increase power yield as well as network compatibility. This continued operation involved progressively reducing the power and rotor speed of the turbine as the wind speed increased. The patent was held to be invalid for lack of inventive step over one of the cited pieces of prior art, and even if valid would not have been infringed by the defendants’ wind turbines.
Unwired Planet International Limited v Huawei Technologies Co. Limited et al, High Court of Justice, Patents Court, London, UK, 21 July 2015, Case No.  EWHC 2097 (Pat)
This is an interim judgment in the ongoing dispute between Unwired Planet, Huawei and Samsung relating to various patents which are declared to be standard essential (SEPs) and which were acquired by Unwired Planet from Ericsson. In this interim judgment, Birss J struck out arguments brought by Samsung that Ericsson had breached Article 101 TFEU by not ensuring the transfer of an effective FRAND obligation to Unwired Planet in relation to these patents. However, he allowed arguments relating to other alleged breaches of Article 101 to proceed to trial, on the basis that they might have a real prospect of success.
Samsung contended that Ericsson and Unwired Planet had breached Article 101 TFEU in three ways. First, there was a failure to ensure the complete, proper and effective transfer of an enforceable FRAND obligation. Second, by dividing Ericsson’s patent portfolio into two parts (some staying with Ericsson, the rest being transferred to Unwired Planet) in the way that it did, a breach of competition law had taken place in that unfair higher royalties would be earned and competition would be restricted or distorted. Third, certain terms in the sale agreement between Ericsson and Unwired Planet were infringements of Article 101.
- Trilingual booklet DE/EN/FR comprising Unitary Patent Regulations, Unified Patent Court Agreement and Draft № 17 Rules of Procedure (31 October 2014) and the full transcript of the Trier public hearing (26 November 2014): (direct link) A version of this booklet incorporating the 18th draft of the Rules of Procedure of the Unified Patent Court will be available when this draft is approved and published by the Preparatory Committee, hopefully in September 2015.
The full transcript of the Trier public hearing (26 November 2014) is also available as a separate document here.
Resolution Chemicals Limited v. Astrazeneca B.V. and Shionogi Seiyaku Kabushiki Kaisha, District Court The Hague, 15 July 2015, Case No. HA ZA 14-738, now including a translation in English and an extended head note with thanks to Mark van Gardingen and Jan Pot, Brinkhof
Shionogi holds supplementary protection certificate (SPC) 300125 for ‘Rosuvastatinum, if desired in the form of a non-toxic pharmaceutically acceptable salt, in particular the calcium salt’. AstraZeneca is the exclusive licensee for this SPC. The basic patent for the SPC was EP 0 521 471 (“EP 471”), which had expired in 2012. Claim 1 of EP 471 was for “the compound [rosuvastatin, described using its molecular formula] acid or a non-toxic pharmaceutically acceptable salt thereof.”
Resolution Chemicals requested the Court to partly nullify the SPC, namely insofar as it extended to more than the calcium and sodium salt of rosuvastatin, and to grant a declaration of non-infringement in relation to its rosuvastatin zinc salt. The case is somewhat unusual in that Resolution Chemicals attacked the validity and scope of protection of the basic patent after its expiration in order to limit (the scope of protection of) the SPC.
[X] (natural person, anonymized) and Jet Set Hydrotechniek B.V. v. Hoffland B.V. and [Y] (natural person, anonymized), also doing business under the name Brielle Industrie Services, District Court of The Hague, the Netherlands, 3 June 2015, Case number 444144 / HA ZA 13-638
[X] holds a patent for a system and method for cutting steel plates (EP '630). Jet Set trades in cutting devices developed by [X] under the name RAGWORM. Hoffland offers demolition services, inter alia with respect to oil storage tanks, while Brielle Industrie Services as a one-man-business offers cleaning services for tanks, as well as cutting services for tanks by means of water under high pressure.
In April 2013, the parties concluded a settlement agreement, in which it is inter alia set out that Brielle Industrie Services acknowledges infringement of EP '630 and undertakes to refrain from (further) infringement of EP '630, unless if it were ruled by a court that EP '630 is invalid in a judgment that has become final (no longer open to appeal).
World Wide Technical Services N.V. v. Panasonic Marketing Europe GmbH and Panasonic Manufacturing UK Ltd., District Court of The Hague, the Netherlands, 15 July 2012, Case number 460236 / HA ZA 14-228
WWTS holds a method-patent (EP '882) for connecting a computer, a server, a computer program product and a system, which technology is implemented into WWTS's IQonn software. WWTS had licensed its IQonn Software to Panasonic via a third party, Diginext, which has since been declared bankrupt. After an update, parties disagreed on the scope of the license. Panasonic was under the impression that the paid license fee was meant for version 3 and 4, while WWTS claimed that Panasonic should pay a separate license fee for version 4. Additionally, WWTS accused Panasonic of infringing its patent and copyrights by selling Toughbook laptops with version 4 of the IQonn Software, without having a license to do so.
VPG Systems UK Limited v Air-Weigh Europe Limited, UK, High Court (Intellectual Property Enterprise Court), HHJ Hacon, 1 July 2015
On 1 July, HHJ Hacon ruled that the patent in suit was invalid for lack of inventive step. The relatively short judgment is of interest as it records the judge’s exposition of the English approach to answering the statutory question of what is obvious under the established Windsurfing/Pozzoli analysis generally adopted by the English courts.
Although many readers will be familiar with the four-step Windsurfing/Pozzoli approach to the obviousness question, it is worth setting out the steps:
(1a) Identify the notional “person skilled in the art” (1b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the “state of the art” and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?
In relation to the second step, HHJ Hacon noted that the inventive concept is not the same as the inventive step.
Huawei Technologies Co. Ltd v. ZTE Corp. and ZTE Deutschland GmbH, CJEU 16 July 2015, C‑170/13
On those grounds, the Court (Fifth Chamber) hereby rules:
1. Article 102 TFEU must be interpreted as meaning that the proprietor of a patent essential to a standard established by a standardisation body, which has given an irrevocable undertaking to that body to grant a licence to third parties on fair, reasonable and non-discriminatory (‘FRAND’) terms, does not abuse its dominant position, within the meaning of that article, by bringing an action for infringement seeking an injunction prohibiting the infringement of its patent or seeking the recall of products for the manufacture of which that patent has been used, as long as:
– prior to bringing that action, the proprietor has, first, alerted the alleged infringer of the infringement complained about by designating that patent and specifying the way in which it has been infringed, and, secondly, after the alleged infringer has expressed its willingness to conclude a licensing agreement on FRAND terms, presented to that infringer a specific, written offer for a licence on such terms, specifying, in particular, the royalty and the way in which it is to be calculated, and
– where the alleged infringer continues to use the patent in question, the alleged infringer has not diligently responded to that offer, in accordance with recognised commercial practices in the field and in good faith, this being a matter which must be established on the basis of objective factors and which implies, in particular, that there are no delaying tactics.
2. Article 102 TFEU must be interpreted as not prohibiting, in circumstances such as those in the main proceedings, an undertaking in a dominant position and holding a patent essential to a standard established by a standardisation body, which has given an undertaking to the standardisation body to grant licences for that patent on FRAND terms, from bringing an action for infringement against the alleged infringer of its patent and seeking the rendering of accounts in relation to past acts of use of that patent or an award of damages in respect of those acts of use.
New Business Distribution Schemes reveal an alarming loss of Board members
The new Business Distribution Schemes for the Boards of Appeal for the second half of 2015 have been published on the EPO’s website, following the re-appointment of members in the Administrative Council’s meeting in the preceding week. The schemes show the following vacancies:
Chairmen Technical Boards of Appeal: 3 of 28 available posts Technically qualified members: 8 of 111 available posts Legally qualified members: 7 of 33 available posts
This means an overall vacancy rate of over 10%, and a vacancy rate for legally qualified members of over 20%. Such vacancies are without precedent in the past and result from the fact that the President of the EPO has not made use of his right to propose appointments of new Board members to the Administrative Council since the Enlarged Board of Appeal rendered its decision R 19/12 of April 25, 2014 (see post dated 05/05/2014).
Comments in the blogs report that the selection and appointment proceedings pending at the time were stopped and no new selection proceedings were allowed to start and that even the re-appointments were delayed, sometimes until the last minute. In addition, no requests for prolongation of service of Board members from 65 years to 68 years, as foreseen in the Service Regulations, were allowed.