Top 10 patent cases of the year 2019

JUVE Patent’s top 10 patent cases in Europe 2019 in alphabetical order:

• Anticlimax for mobile phone patents in Paris
• European jurisdictions diverge in Bayer vs. Ceva
• Generics and Eli Lilly reach deadlock in pemetrexed dispute
• Haar belongs to Munich
• Illumina loses DNA sequencing patents
• Nokia, Daimler and Continental battle across the Atlantic
• Patenting plants
• Philips and TCL FRAND battle
• Tadalafil patent found invalid at Supreme Court
• Unwired Planet and Huawei battle it out again

…and 10 + 1: latest predictions for the UPC

Anticlimax for mobile phone patents in Paris

High-profile dispute between Conversant and LG reaches unspectacular end

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The Court of Appeal in Paris declared the patents non-essential (case-ID: RG 15/17037) in a decision many hoped would set FRAND licences.

In the first instance, the Tribunal de Grande Instance found five patents owned by non-practicing entity Conversant Wireless to be non-essential (case ID: 14/14124). Conversant lodged an appeal against that decision.

In the second instance, the dispute revolved around only two intellectual property rights (EP 950 330 BI, EP 978 210 Blet). However, the appellate court followed the opinion of the first instance court in dismissing Conversant Wireless’ claims for damages. It also dismissed all counterclaims by LG.
This made it unnecessary for the court to set FRAND rates, which originally brought the case into focus for the international patent community. It was hoped that, for the first time, a French court would also set a globally-valid FRAND rate for mobile phone licences. These hopes are now dashed.

However, for the first time since the introduction of a new law in France, part of the oral hearing in the civil proceedings took place in camera. This was to protect trade secrets. Only certain parts of criminal cases have so far been conducted in camera.

Conversant Wireless was represented by then-Reed Smith litigator Marina Cousté in the first instance. Cousté later moved to the patent practice of Simmons & Simmons. Hoyng ROKH Monégier  came to the case in the second instance, representing the NPE Conversant for the first time. Paris patent litigator Cyrille Amar advised the defendant LG from the first instance.
Find more information on the case and its advisors here.

Bayer against Ceva across Europe

Patent law diverges between European jurisdictions

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Bayer accused global veterinary health company Ceva of infringing European patent EP 21 644 96 across several European jurisdictions. It pertains to a veterinary medical preparation for farm animals, specifically piglets. Bayer brought infringement proceedings against Ceva. It argued that Ceva’s injectable product Forceris infringed the patent which covers Bayer’s product Baycox Iron, in Germany, France and the Netherlands. Proceedings are also ongoing in Spain and Greece, and have been initiated in six other European jurisdictions.

Courts in Hamburg, Paris and the Hague released differing judgments on the case. In Germany, ex-parte proceedings resulted in the court granting a preliminary injunction against Ceva. However, the original decision was maintained by Hamburg District Court. The court also confirmed that Bayer’s patent is not limited to oral administration.

In France, the Paris High Court considered a different outcome. It suggests that the patent did not extend to a combination administered by injection and therefore Ceva did not commit infringement. Furthermore, in the Netherlands, the District Court of the Hague presumed that the patent is invalid on the grounds of inventive step. It thus dismissed Bayer’s claims of infringement by Ceva (case ID: KG ZA 19-621).

One lawyer suggested to JUVE Patent that this disparate approach is partially explained by the German bifurcation system, which examines validity and infringement in separate proceedings. Moreover, the question of validity tends to be settled earlier, especially if the first instance judgment is at the EPO. Another European patent lawyer speculated that courts outside of Germany can be more sceptical on validity.

Hoyng ROKH Monegier acted for Ceva in France, Germany and the Netherlands. Allen & Overy acted for Bayer in Germany, France, and the Netherlands, and co-ordinated or led parallel proceedings in eight other jurisdictions. However, the litigation team relied on Düsseldorf outfit König Szynka Tilmann von Renesse, which has an established relationship with Bayer.
Find more information on the case and its advisors here.

Generics and Eli Lilly reach deadlock in Germany

IFA involvement makes for complex pemetrexed case

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In August, the patent senate of the Higher Regional Court Munich ruled in favour of generic drug manufacturers. However, some companies may not sell their products through pharmacies due to another ruling by the antitrust senate.

In Germany, the pemetrexed dispute between generic drug manufacturers and Eli Lilly over its patent EP 1 313 508 B1 has been ongoing for years. So far, the outcomes have been largely positive for the generics manufacturers.

However, this judgment in the pemetrexed dispute was the result of a parallel dispute between Eli Lilly and the Munich-based IFA. The IFA is an information service provider for the German pharmaceutical market. Products that are not listed in the IFA database may only be used for treatment in hospital.

Parallel to the proceedings against the generic drug manufacturers, Eli Lilly had also filed a suit against the IFA and its listing of generic drugs. At the end of 2016, the US pharmaceutical company obtained an injunction at the Regional Court Munich (case ID: 21 O 19033/16) prohibiting the IFA from listing pemetrexed generics.

At that time, the Federal Patent Court had not yet nullified the patent and so the IFA recognised the judgment as legally binding in a final declaration.

In the meantime, the IFA added the generic drugs to the database once the injunctions were stayed and the patent declared invalid. As a result, Hikma Pharma applied for an injunction against Eli Lilly (case ID: 37 O 9687/19) and won. Munich Regional Court granted the injunction without a hearing, prohibiting the US pharmaceutical company from demanding that IFA stop listing Hikma Pharma’s product.

At the same time, Frankfurt Regional Court issued an order (case ID: 3-10 O 78/19) at the request of Hikma Pharma stating that the IFA must continue to list its generic drug. Zentiva Pharma and Hexal also benefit from this decision.

Fresenius was initially advised by the mixed law firm Maiwald. However, the company switched to a mixed team from Bird & Bird after the Federal Patent Court’s nullity decision. At the same time, Düsseldorf Bird & Bird partner Oliver Jüngst is advising Stada.

Hikma Pharma has a long-standing client relationship with the patent law firm Wittkopp. The company also works regularly with Preu Bohlig. Munich partner Peter von Czettritz has worked for Hikma in the past but Hamburg partner Daniel Hoppe took the lead in the current case.

Frankfurt medical law boutique Sander & Krüger has advised the IFA for years. On the other hand, Pinsent Masons advised Accord for the first time.
Find more information on the case and its advisors here.

Haar belongs to Munich

Enlarged Board of Appeal takes stand on EPO location

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The Enlarged Board of Appeal decided that the suburb Haar is permissible as the location of the Boards of Appeal in Munich following an application by patent attorney Hans-Dieter Jostarndt. Furthermore, the court ruled that there is no right to a hearing where a complaint is evidently inadmissible. The first issue is particularly interesting against the background of a conflict with EPO president António Campinos.

The decision to relocate the Boards of Appeal to Haar was taken against the backdrop of the discussion about the Boards’ independence. Nevertheless, the patent scene was surprised when Hans-Dieter Jostarndt questioned whether this location was admissible for the Boards of Appeal’s hearing in proceedings against IPCom for patent EP 2 3787 35.

Representatives of the EPO president explained that, in their view, Haar belonged to the greater Munich area and thus did not contradict the provisions of the EPC concerning the location of the EPO. The discussion also focused on the fact that the Dutch town of Rijswijk also belongs to The Hague in the sense of the EPC but is not formally part of the city.
Find more information on the appeal and related attorneys here.

Illumina loses DNA sequencing patents

Decreasing costs means more litigation over DNA sequencing technology

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The European Patent Office has destroyed several patents belonging to Illumina, a US manufacturer of genetic engineering equipment. The DNA sequencing patents are interesting for competitors such as MGI and the BGI Group, which are also in the midst of patent infringement claims.

At the end of November, the EPO Boards of Appeal rejected Illumina’s appeal concerning EP 2 325 304 (T2248/14-3.3.08). The patent covers a DNA sequencing method. The EPO also revoked patents EP 2 338 893 and EP 1 451 351 B1 from a patent family for labelled nucleotides. The two patents cover technology for next generation sequencing.

Overall, several patent disputes relating to Illumina’s DNA sequencing technique are still pending at the EPO. The costs of this technology have fallen sharply in recent years. As a result, companies are now fighting hard for market share in this cutting-edge technology.

Illumina was represented by Colm Murphy, London partner of US law firm Cooley. The European patent attorney also regularly files patents for the US company at the EPO. European patent attorney Philippa Griffin of Mathys & Squire appeared as a strawman in the appeal hearing. Griffin’s clients include New England Biolabs and the Ecole Polytechnique Fédérale De Lausanne (EPFL).
Find more information on the case and its advisors here.

Nokia, Daimler and Continental battle across the Atlantic

A blueprint for connected car patent litigation

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In less than ten months, the bitterly-fought battle between Nokia and Daimler has become the lead case for connected cars patents. In April, Nokia supported by Arnold Ruess filed ten patent lawsuits at the regional courts of Düsseldorf, Mannheim and Munich against automotive corporation Daimler over 3G and 4G mobile communication standards. The Finnish company accuses Daimler of infringing its standard essential patents, and is demanding damages and the rendering of accounts.

Meanwhile it became public that Nokia’s claims are part of the Avanci patent pools negotiations with Daimler. Avanci is the main pool for connected cars patents. Some other auto manufacturers such as BMW and VW have already agreed on a Avanci licence – but not premium German brand Daimler. To increase the pressure on Daimler, other pool members accused Daimler of also infringing their patents. Sharp filed five claims at German courts, Conversant filed four claims. This means that, at the close of 2019, 19 patents are in disputes. Quinn Emanuel Urquhart & Sullivan has taken over all defenses for Daimler.

But that’s not the end of the story. Daimler and its suppliers set a counterstrike, where the famous anti-anti-suit injunctions battle across the Atlantic started. In early summer, Germany-based supplier Continental applied for an anti-suit injunction in the US. It aimed to have the proceedings against Daimler and its automotive suppliers in Germany prohibited by law.

However, Nokia challenged Continental’s claims in the US with an anti-anti-suit injunction at Munich Regional Court. The Munich court reacted quicker and stated that the US anti-suit injunction was incompatible with German law. As a consequence, Continental withdrew its anti-suit injunction against Nokia in the US in September. About three months later, Continental and its advisors from Freshfields Bruckhaus Deringer also lost its appeal against the anti-anti-suit injunction.

At the beginning of December it also became public that the European Commission asked Nokia, Daimler and four suppliers Continental, Valeo, Gemalto and Bury to enter into mediation. When it became obvious that the negotiations between Avanci and Daimler were going to fail, ten months prior, the car manufacturer lodged a complaint with the European Commission against Nokia’s behaviour concerning its SEPs.

According to sources, the parties are now arranging mediation. The commission expects a result by mid-February. Meanwhile, however, the infringement proceedings in Germany continue.

The connected cars lawsuits have now reached the greater political stage. In Berlin, too, the German government is considering weakening the automatic injunction, having come under pressure from the strong German auto industry.

The war over connected car patents is in full swing. The main battle ground is of course Germany.
Find more information on the case and its advisors here.

Patenting plants

EPO examiners explore solution to growing problem

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In March, EPO member states expressed concern with regard to the legal uncertainty caused by decision T 1063/18. The EPO president said that “a president’s referral of the case to the Enlarged Board of Appeals is justified and necessary.” According to a press release, his aim was to obtain an opinion from the Enlarged Board of Appeal on the patentability of plants exclusively obtained by essentially biological processes, hereby considering recent legal developments.

The Administrative Council attempted to prohibit the patentability of plants in 2017. By revising Article 53(b) and amending Rule 28, the council closed a loophole in the law which was being exploited by applicants. But experts question the legality of the Administrative Council’s approach. The Administrative Council exercises a legislative function within the EPO, but is not responsible for interpreting European Patent Convention laws. As the highest court instance, this task falls to the Enlarged Board of Appeal.

“Technically, the examiners can still reject these patent applications as they are bound by the guidelines which apply the amended Implementing Regulations,” says Gregor König, patent attorney at Düsseldorf firm König Szynka Tilmann von Renesse. The patent attorney hoped that the EPO would accept the primacy of Art. 53 over the Implementing Regulations. König filed a submission as part of the ongoing Syngenta case concerning a novel pepper plant. In this case the Boards of Appeal previously declared  the European Patent Office’s current granting practice for plant and animal patents invalid.

Another possibility is to convene a diplomatic conference on amending the EPC. This is lengthy and costly, however, and is therefore unlikely. Establishing a new EU regulation is considered equally unlikely.
Find more information on the case here.

Philips and TCL FRAND battle

France a potential new jurisdiction for FRAND cases

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For over a year, Philips has been fighting with TCL over two standard essential patents, EP 1 440 525 B1 and EP 1 623 511 B1. Now the next challenge between Philips and TCL is underway in France. If the UK court upholds the IP rights and acknowledges the infringement, Philips also expects the High Court to determine a global FRAND licence rate for its entire UMTS and LTE patent portfolio.

On the other hand, TCL is challenging whether the UK court has the jurisdiction to rule on the FRAND issue. The company argues that, as the European Telecommunication Standards Institute is based in the south of France, the French courts have jurisdiction.

The debate on 3 December also focused on the obligations of ETSI towards TCL, the first time ETSI has faced litigation from one of its members. It is one of three major standards organisations in Europe and is tasked with creating standards for information and communication technologies.

Although both Philips and TCL are members of ETSI, there is only a direct contractual relationship between ETSI and Philips regarding the SEPs currently in dispute. However, in the contractual construct known in French contract law as “stipulation pour autrui” (provision for a third-party beneficiary), TCL is one of the third-party beneficiaries.

Judge Nathalie Sabotier will give her ruling on 6 February 2020.  Should the judge allow the FRAND lawsuit to proceed, potential licensees may in future turn to the French courts for FRAND cases instead of the UK.

In Paris, Philips is working with its go-to law firm Hoyng ROKH Monegier. Sabine Agé represented the firm before the Tribunal de Grande Instance. The international IP firm is also conducting the Dutch proceedings for Philips. TCL relied on Denis Schertenleib. His firm is well known for pharma litigation, but also for representing NPEs before Paris courts.
Find more information on the case and its advisors here.

Tadalafil drug patent found invalid by Supreme Court

Inventive step at the forefront of major pharma dispute

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The UK Supreme Court has ruled patent EP (UK) 1173 181 for the drug tadalafil as invalid after it was found to lack inventive step. It is owned by ICOS Corporation and licensed to global pharmaceutical company Eli Lilly.

The drug tadalafil is sold under the brand name CIALIS and used to treat erectile dysfunction. Eli Lilly argued that the patent for a 5mg dosage was valid. This argument was on the grounds that it was not obvious use to trial such a small dose for erectile dysfunction. Presiding judge Colin Birss agreed with this assessment in the first instance ruling, citing the regime as inventive.

However global pharmaceutical companies Actavis and Teva, and generics company Mylan, appealed the decision to the Court of Appeal based on obviousness. The Court of Appeal reassessed Birss’ judgment of obviousness in the first instance and held that patent EP (UK) 1173 181 was invalid for lacking inventive step.

Eli Lilly then appealed to the Supreme Court. However, in November 2018, the Supreme Court declared Eli Lilly’s patent invalid.

One lawyer at a leading London patent firm says the case is a useful blueprint for future inventive step cases. “It’s the Supreme Court saying, don’t get too tied up in the structural approaches of the EPO, or Germany or the UK. Ultimately, the question is about whether the invention is obvious or not to a person skilled in the art,” he says.

The Supreme Court has also published ten points which provide a guideline for future cases concerning obviousness. Several companies were involved as respondents against appellants Eli Lilly and ICOS, with the London offices of various firms acting on their behalf. This includes Pinsent Masons acting for Actavis Group, Teva UK and Teva Pharmaceuticals, Bird & Bird for Actavis UK and Taylor Wessing for Mylan Pharmaceuticals. It is thought that Allen & Overy acted for ICOS and Eli Lilly.
Find more information on the case and its advisors here.

FRAND in the UK culminates over one week

In October in London, Unwired Planet vs. Huawei, and Conversant vs. Huawei and ZTE stole the show at the Supreme Court

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The outcome of Unwired Planet vs. Huawei, and Conversant vs. Huawei and ZTE, are two of the most hotly-anticipated from any patents court in recent years.

In 2018, a Court of Appeal ruling upheld a landmark High Court judgment made by Colin Birss in the Huawei and Unwired Planet case. The Court of Appeal upheld Birss’ assertion that a global FRAND licence is a fair and reasonable measure, and that a global FRAND licence could prevent hold-out. Furthermore, subjecting an implementer to an injunction is justified, if the implementer does not accept a global licence as FRAND.

Huawei appealed on the grounds that the licence did not qualify as FRAND due to its global scope (case ID: UKSC 2018/0214). Secondly, Huawei argued that the courts offered Samsung a lower global royalty rate. Therefore, the court argued that the required non-discriminatory criteria was not met.

Finally, the Court of Appeal ruled that the CJEU protocol in Huawei v ZTE (2015) was not a set of mandatory conditions for patentees to follow. As such, the court dismissed Huawei’s claim that Unwired Planet used its position as an SEP holder to gain a time advantage.

In the Conversant case, Huawei and ZTE claim that Chinese, not English, courts should hear FRAND claims by the non-practising entity. Both parties had also offered Conversant global FRAND determinations in China. However, the late Henry Carr rejected these suggestions at the High Court. The Court of Appeal upheld the decision being appealed this week (case ID: UKSC 2019/0041; case ID: UKSC 2019/0042).

The court should release the judgment in early 2020. Experts believe they could strengthen London’s position as SEP owner-friendly.

EIP alongside Osborne Clarke acted for NPE Unwired Planet. For Huawei, Powell Gilbert was at the forefront. Both sides used barristers from 8 New Square and Brick Court Chambers sets. EIP also acted for Conversant in the parallel case, with Allen & Overy and Bristows acting for Huawei and ZTE respectively.
Find more information on the cases and their advisors here. 

10+1: Huber has a say on the UPC

Is the end in sight for Germany’s never-ending saga?

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Of course, no patent case list would be complete without the case that has kept the European patent world on tenterhooks for three years.

The constitutional complaint by Düsseldorf lawyer Ingve Stjerna against the German laws for the Unified Patent Court is a test for the European patent court project. Although the UK has ratified the UPC agreement, the complaint has blocked the launch of the UPC since summer 2017. At the same time, the patent court is becoming increasingly caught up in the whirlpool of the UK’s withdrawal from the European Union.

Now, at the turn of the year, the UPC has become a little less crowded. After Boris Johnson was elected as UK prime minister, Brexit is now likely to take place in early 2020. This diminishes the chances of the UK being able to participate in the court as it would require a withdrawal agreement with corresponding rules for UK participation in the UPC.

There is more hope for the UPC complaint itself, however. Peter Huber, the judge rapporteur in the UPC complaint, announced at the end of November a judgment for early 2020. It is still uncertain what the German constitutional court will decide and whether it will decide in time for the UK to participate in the new patent court.

But regardless of what happens next, it seems Huber’s words have renewed interest in the UPC among the European patent community. It is highly likely that the UPC case will also keep us busy in 2020.

Find more information on this case here. 

Co-authors: Christina Schulze, Konstanze Richter and Mathieu Klos