JUVE Patent's top ten cases of the year 2022 reflect the most interesting developments at Europe's patent courts, as well as at the European Patent Office. Over the past twelve months, courts have ruled or deliberated on ever-present issues, such as mobile communication and small molecule pharmaceutical products, but also in emerging areas including glucose monitoring devices, solar panels and patents for COVID-19 vaccines. Judges also continue to grapple with complex issues surrounding 5G and FRAND, delving deeper into issues of licensing. Meanwhile, the market is taking notice as the UPC looks set to begin in the first half of 2023.
21 December 2022 by Amy Sandys
Last-minute settlement for the parties in the US amid global FRAND negotiations
One of the biggest cases of the year, which was forecast to rumble on into 2023 and beyond, has ended on the last day of its US trial. Announced via an Ericsson press release on 9 December, a settlement with Apple ends all ongoing patent-related legal disputes between the parties in the US, Germany, the Netherlands, Belgium and the UK. It also ends disputes in Colombia, where Apple faced a sales ban, and Brazil. The parties indicate that it will also strengthen collaboration between the two companies globally.
The dispute began following the expiration of a licence agreement from 2015. In autumn 2021, Ericsson turned to the District Court of The Hague in the Netherlands for an anti-suit injunction against Apple. Ericsson also asserted seven SEPs and two implementation patents against Apple in the Netherlands and Belgium.
However, in early October 2021, an interim preliminary injunction hearing saw the District Court of the Hague dismiss a request by Ericsson for the AASI. Shortly before Christmas last year, the judges also dismissed Ericsson’s claim to render a pre-emptive AASI in the main proceedings in the Netherlands. Previously, Apple had stated it would not file any ASI claims against Ericsson. However, this was just the prelude to the global dispute; in January 2022, Ericsson filed patent suits against Apple in the US. Ericsson also demanded a US import ban for 4G and 5G products in three lawsuits filed with the USITC.
Ericsson then filed several patent lawsuits against Apple in Germany, the Netherlands and Brazil, with Apple also filing a case in Mannheim. As such, on 21 December 2022, the 21st Civil Chamber of the Regional Court Munich had planned to hear the FRAND objection regarding five SEPs raised by Apple. A hearing on FRAND also took place in Ericsson’s claims against Apple in Mannheim in November. The court should have announced the verdict on 28 February 2023.
Find out more on the case and its advisors here.
After parties filed multiple suits, Europe will host the first major debate over COVID vaccine patents in 2023
It was only a matter of time before the patents for coronavirus vaccines became the subject of litigation. In summer 2022, the first infringement claims by CureVac in Germany hit the news, followed by further disputes, also involving Moderna, in the US, UK and the Netherlands.
CureVac started the dispute by filing a claim against BioNTech at the Regional Court Düsseldorf for infringing one European patent and three German utility models with its mRNA vaccine, Comirnaty. CureVac’s basic patent EP 18 57 122 B1, which the European Patent Office granted in 2010, protects a process that improves the expression of mRNA in cells.
Pfizer, BioNTech’s partner in the US, reacted with a counterclaim at the District Court of Massachusetts to ascertain that its mRNA vaccine against COVID-19 does not infringe CureVac’s US patents. In September 2022, BioNTech and Pfizer began an action against CureVac and Moderna at the High Court of England and Wales.
Meanwhile, Moderna had sued BioNTech and Pfizer in Germany and the US for infringement of its mRNA patents. At the Regional Court Düsseldorf, the claimant strives to assert two patents, EP 35 90 949 and EP 37 18 565.
In each of the infringement claims, the respective claimants demand damages rather than a withdrawal of the competing vaccines from the market. In the new year, further litigation between the parties are expected to start in numerous jurisdictions. Revocation claims against mRNA patents at European courts as well as oppositions at the EPO are currently pending.
Find out more on the case and its advisors here and here.
Parties battle over multiple patents for complex technology, combining life sciences and tech
With around 60 million people living with diabetes in Europe alone, the condition is prevalent. Traditionally, patients have monitored glucose levels via a ‘finger prick’ method, but both Dexcom and Abbott market devices where a small sensor is inserted under the skin to alert the user as to their current glucose levels. This is via connection to a wireless glucose monitoring device (continuous glucose monitoring, or CGMs).
Now the companies are head-to-head over twelve separate patents covering their respective CGMs as they gear up to launch new, lower cost and apparently more innovative products into their ranges. Currently, the public dispute spans the UK, Germany and the US. Opposition proceedings at the European Patent Office are also ongoing.
In Europe, the dispute began in July 2021 when Dexcom filed infringement suits on four of its patents against Abbott at the Regional Court Mannheim. Abbott counterclaimed by asserting infringement of four of its own patents against Dexcom at the same court. Two further cases, brought by Abbott against Dexcom, are ongoing at the Regional Court of Düsseldorf. Both companies have sued each other for injunctive relief. But neither Dexcom nor Abbott have filed applications for a preliminary injunction.
While the Regional Court Mannheim has dismissed the first case by Abbott against Dexcom over EP 24 76 223, the Regional Court Mannheim heard another infringement case against Dexcom by Abbott concerning EP 21 46 627. Furthermore, the Regional Court Mannheim heard two cases pertaining to two Dexcom patents in April and May 2022. Dexcom again accused its competitor of infringement. In the US, parties remain at loggerheads as both prepare to launch new products.
In the UK, eight patents are at issue, with both parties challenging the patents-in-suit of the competitor. Abbott had applied to the High Court to expedite a validity trial against Dexcom in order to avoid the so-called injunction gap, where the bifurcated German system examines validity and infringement separately. This can lead to courts granting an injunction before reaching a finding on validity. However, judge James Mellor rejected the request, with the court hearing the first case over five patents in November 2022. Two further technical trials are planned for April 2023 and July 2023.
Find out more on the case and its advisors here.
Second medical use patents on the agenda in cancer drug battle
In a dispute spanning numerous European countries, Novartis is fighting to enforce its second medical use patent EP 29 59 894. The patent covers a 0.5mg per day dosage of active ingredient fingolimod, which forms the basis of Novartis’ drug Gilenya. The product is used to treat relapsing-remitting multiple sclerosis.
The extended market exclusivity for Gilenya ended on 22 March 2022. Novartis had filed the divisional patent in 2015, but in November 2020 the EPO’s Examining Division refused to grant it based on lack of novelty. The company appealed against this decision. Although in February 2022, the Technical Boards of Appeal overruled the original decision, it took until September till EP 894 was officially granted.
Numerous generics manufacturers in Europe took advantage of the gap between the end of market exclusivity and the official granting of the patent to sell copycat products in various markets. Novartis took action against several generic drug companies, including Mylan, Zentiva and Biogaran, in multiple countries, including the UK, Netherlands, Spain, Greece, Germany, Sweden, Denmark, Austria, Finland, Belgium, Italy, Portugal and Switzerland.
The originator applied for preliminary injunctions based on the grounds that the EPO had given the green light for granting the second medical use patent before the end of market exclusivity of the original drug. So far, courts in Germany, the Netherlands and France have rejected Novartis’ requests for preliminary injunctions.
Find out more on the advisors in the German case here, the French case here and the Dutch case here.
Insecticide composition dispute spawns debate over plausability standards
Can post-filed experimental evidence be used to prove a technical effect for patentability and if so, under what conditions? This was the question addressed by the Enlarged Board of Appeals in an oral hearing in late November, in case G 2/21. The decision could have far-reaching implications for users of the EPO.
So far, established EPO case law requires that, in order for such data to be taken into account, it must be plausible from the application as filed in combination with common general knowledge that the technical effect was already achieved at the date on which the patent was filed.
The G 2/21 case is based on a dispute between Sumitomo Chemical and Syngenta concerning an opposition against Sumitomo’s EP 24 84 209, which protects insecticide compositions. After the Opposition Division rejected the opposition in 2017, Syngenta filed an appeal in T 116/18). In its decision, the Boards of Appeal identified diverging strands of case law regarding the assessment of plausibility.
According to the Boards of Appeal, these are the “ab initio plausibility”, the “ab initio implausibility” and the “no plausibility” standards. Therefore, the Boards of Appeal 3.3.02 submitted three questions of law to the Enlarged Board of Appeal in October 2021:
The Enlarged Board’s decision could have wide-reaching implications for patent applicants. This is especially in the field of life sciences, where data generation can be slow and costly.
JUVE Patent will report further on this case once the EPO releases its decision.
Dutch courts once again expand jurisdiction under Brussels Recast Regulation
The debate began in 2019, when Hanwha Q-Cells filed a patent infringement lawsuit against Longi, Norway’s REC and JinkoSolar in Europe, the US and Australia. While other decisions have been published in Germany and at the EPO, this year in the Netherlands the dispute again demonstrated the quirks of the Dutch cross-border injunction.
In March, the District Court of Rotterdam ruled on a cross-border injunction against Longi in eleven European countries – Belgium, Bulgaria, Germany, France, Liechtenstein, Portugal, Spain, the UK, and Switzerland. Under Article 4 of the Recast Brussels Regulation, even if there is no Dutch patent at issue, its courts have cross-border jurisdiction to hear Hanwha’s claims against Longi regarding EP 22 20 689 B1.
In March 2022, the Court of Appeal in The Hague then confirmed the first instance decision and expanded the cross-border injunction to two further European countries, Hungary and Austria. However, while Hanwha Q-Cells had originally applied for a preliminary injunction for all 16 European countries, the Rotterdam court did not grant an injunction for Croatia, Greece, Italy, Romania and Turkey. This is because Hanwha Q-Cells was not yet registered as the patent owner in these countries.
The Court of Appeal also determined that Longi, as well as its customers, directly infringes Hanwha’s patent. Longi’s appeal is pending before the Supreme Court. Infringement proceedings are also pending in Germany, France, Australia and the US – here, Longi successfully invalidated a Hanwha patent in June. Opposition proceedings are pending before the European Patent Office. The original case came about following the seizure of solar panels in Rotterdam harbour, which is the largest product seizure to occur in the Netherlands.
Find out more on the Dutch case and its advisors here.
Multi-cell network access at issue in French mobile communications trial
Intellectual Ventures was unsuccessful in 2022 in the series of proceedings concerning various mobile phone patents in France. After the NPE had already suffered a defeat at the first instance against multiple parties in a dispute over EP 16 94 020 in 2021, the Tribunal Judiciaire then rejected further infringement claims by the patent holder.
One case concerned the French part of EP 13 04 002, which protects a technology for arranging data ciphering in a wireless telecommunication system. The Société Française du Radiotéléphone (SFR) has offered its “Auto Connect WiFi” service since 2012, which gives customers access to the internet via hotspots. In providing this service, Intellectual Ventures accuses the French telecommunications provider of infringing three claims of the French part of EP 002. Now the judges have declared these claims null and void. They have also dismissed the infringement suit.
In a further dispute, Intellectual Ventures accuses the two French telecommunications companies Bouygues Telecom and SFR of infringing two claims of EP 13 27 374 within their networks since 2013. The patent protects service priorities in multi-cell networks.
Huawei joined the two lawsuits as a supplier of network equipment to SFR and Bouygues Telecom. The defence argued that a person skilled in the art would be unable to carry out the invention and that the patent claims also lack novelty.
The judges did not follow the first argument, but found EP 374 invalid due to lack of novelty and dismissed the infringement suit. In the case of EP 020, an appeal is currently pending.
Find out more on the cases and the advisors here (EP 002) and here (EP 374)
Mobile communication giants go head-to-head over licences in multiple jurisdictions
Nokia and Oppo are battling over various patents for the 3G, 4G and 5G mobile standards in a global dispute involving the UK, Germany, Spain, France, Russia, China, India, Sweden, Finland and the Netherlands. From 1 July 2018 to 30 June 2021, Oppo were licensed by Nokia. The former also granted the Finnish company a cross-licence in respect of Oppo’s own portfolio of SEPs. However, negotiations for a further licence have so far not borne fruit. In the absence of a new licensing deal, Nokia is now accusing the Chinese mobile phone manufacturer of infringing its patents – both SEPs and non-SEPs – with its mobile devices under the Oppo and OnePlus brands
On 1 July 2021, Nokia filed a lawsuit at the UK High Court. In the UK proceedings, the jurisdictional dispute pertains to the English parts of the three European patents EP 20 70 217, EP 20 87 626 and EP 29 81 103. The latter patent is also part of disputes in Germany.
In response, Oppo filed a request with the People’s Court of Chongqing, China, that the court determine a global FRAND licence for Nokia’s portfolio. In the UK, Oppo then asked for a stay of the proceedings pending the decision of the Chinese court.
In the Netherlands, Oppo has failed to gain a Dutch verdict against Nokia, which it hoped would influence its German lawsuits regarding two important SEPs. The District Court of The Hague rejected Oppo’s invalidity claims and found the company had committed patent infringement against two Nokia SEPs EP 29 81 103 and EP 32 20 562.
Nokia also achieved two successes in Mannheim after it sued Oppo and OnePlus for infringement, as well as a cease and desist order, over the same SEPs: EP 103 and EP 562. The patents belong to the same family as implementation patent EP 17 04 731. Firstly, the court found in mid-June that Oppo infringed EP 731, which Oppo appealed. Then, in July, the 2nd Civil Chamber found Nokia’s disputed standard essential patents infringed. Furthermore, the court rejected the defendant’s FRAND objection and judged Oppo to be an unwilling licensee.
Elsewhere, in Munich, the 21st Civil Chamber of the Regional Court ruled that Oppo infringed two of Nokia’s SEPs EP 35 57 917 and EP 20 80 193. Nokia had sued for infringement. The court also ordered two Oppo subsidiaries, Reflection Investment and OnePlus, to cease and desist. According to Nokia, the court found Oppo unwilling to grant a licence while ruling that Nokia had behaved fairly.
Find out more on the UK case and its advisors here, the Dutch case and its advisors here, and the German case and its advisors here.
Greece the unusual battle ground in patent dispute over Dutch cross-border injunctions
Greece is no ordinary battleground for patents. There are no sensational patent decisions from Athens. But because Pharmathen Global’s Greek subsidiary manufactures its generic cancer drug Okrodin in Greece and markets it from there in Europe, the country became the focus of a dispute with pharmaceutical giant Novartis. The dispute recently wrote legal history when the District Court of The Hague further developed its case law on cross-border injunctions.
Novartis holds the patent for the original drug. EP 23 77 519 B1, which pertains to a slow-release hormonal treatment used to treat cancer patients. The patent expires in November 2023. Since the manufacturing process is notably difficult, and given its prevalence as a cancer treatment, the drug is likely worth hundreds of millions of euros to either party in Europe.
The dispute began in 2019, when pharmaceutical generics company Pharmathen SA took Novartis to court in Athens in a proceedings on the merits. It sought a declaration of non-infringement of EP 519 to clear the market for its generic product. The Greek court ruled that Pharmathen SA did not infringe EP 519.
However, Novartis then turned to the District Court of The Hague, which granted a cross-border injunction against parent company Pharmathen Global. The court prevented the company from selling the generic drug to distributors anywhere in Europe where the patent is in force. The judges also found the parent company responsible for infringing Novartis’ patent, even though it is the company’s Greek subsidiary, Pharmathen SA, that actually manufactures the generic drug. Novartis has enforced the patent in the Netherlands, Austria, Belgium, France, Germany, Greece, Italy, Liechtenstein, Portugal, Spain, Switzerland, Turkey and the UK.
The first decision was already far-reaching. On appeal, however, the Court of Appeal in The Hague went further and directly convicted Pharmathen Global of infringing EP 519. However, a small success for Pharmathen is that the appeals court stated the District Court of The Hague should not have intervened in the Greek proceedings. It is unclear what this means for the production and distribution of Okrodin in Greece.
However, parent companies with headquarters in the Netherlands will have to look carefully in the future at what they instruct their subsidiaries in Europe to do. Otherwise, they risk a finding of patent infringement and receiving a Europe-wide injunction. Thus, an appeal to the Supreme Court, which is very likely to take place, is significant. With such a corporate structure, competitors can more easily attack their European business.
Find out more on the case and its advisors here.
James Mellor’s decision on FRAND hotly anticipated by clients and firms in the UK and Europe
In January 2022, a two-week trial between non-practising entity InterDigital and mobile device manufacturer Lenovo took place at the UK High Court. It was the first major FRAND trial since Unwired Planet vs. Huawei between 2017 and 2020, also involving parallel litigation in the US and China. The proceedings are the result of a major global licensing dispute between InterDigital and Lenovo, covering nullity, competition law, and FRAND issues.
InterDigital initially alleged that Lenovo infringed five SEPs in the UK. The NPE claimed that all patent were essential to the 3G and 4G UMTS and LTE standards. The patents, EP 24 85 558, EP 23 63 008, EP 25 57 714, EP 24 21 318 and EP 33 55 537 are part of InterDigital’s portfolio and are regulated by the European Telecommunications Standard Institute (ETSI). The portfolio also contains patents granted in the US and China.
In summer 2021, the court found InterDigital’s EP 558 valid and essential to the 4G communications standard. This decision provided a springboard from which the parties commenced the FRAND trial. However, in December 2021 the judge denied the NPE’s injunction request against Lenovo. In the decision, presiding judge Richard Hacon referred to a previous judgment in the case between Apple and Optis, whereby the court determined that Apple must take a licence on as-yet-undecided FRAND terms or face an injunction. Recently, the Court of Appeal upheld this decision.
The case has the market talking, given the importance of questions surrounding whether judges will maintain the standards previously set by former High Court judge Colin Birss in global licensing jurisprudence. The Supreme Court upheld Birss’ judgment in August 2020, when it published its long-awaited judgment in the dispute between Unwired Planet vs. Huawei.
In doing so, the Supreme Court judges confirmed that the courts of England and Wales have jurisdiction to determine global FRAND terms and rates.
Find out more on the case and its advisors here.
Co-authors: Konstanze Richter and Mathieu Klos