Year in review 2021

Top 10 patent cases of the year 2021

JUVE Patent's top 10 patent cases of the year 2021 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 on important issues such as connected cars, FRAND and video conferencing. Judges also continue to grapple with complex issues surrounding emerging technologies such as AI and robotics. And, meanwhile, Europe is preparing for further SEP disputes and big-ticket pharma litigation - and the now-almost-certain Unified Patent Court.

22 December 2021 by Amy Sandys

JUVE Patent's top 10 patent cases of 2021 ©Dominik Rosse/JUVE

JUVE Patent’s top 10 patent cases in Europe 2021:

  • AutoStore and Ocado battle over patents for robot technology
  • Bayer blockbuster Xarelto enjoys surprise success at EPO
  • Dabus goes global in pursuit of recognition
  • Eli Lilly shapes French case law on damages in pemetrexed case
  • G 1/21 referral puts video conferencing in the spotlight
  • Hanwha Q-Cells and Longi go pan-European over solar panels
  • InterDigital vs. Xiaomi ruling in Germany ends global ASI litigation
  • Meril and Edwards fight over transcatheter heart valves
  • Nokia faces Oppo on FRAND and jurisdiction
  • Phoenix Contact against Harting leads to CJEU referral

AutoStore and Ocado battle over patents for robot technology

The case, which is Europe-wide, reached the UK Court of Appeal in July 2021

Ocado, Autostore

Ocado and AutoStore took their dispute to the next level when Ocado sued AutoStore for patent infringement in Germany ©alexlmx/ADOBE STOCK

Warehouse automation system company AutoStore and UK online grocer Ocado are currently embroiled in a high-stakes debate involving multiple patents over infringement of property rights. AutoStore uses “cube-storage automation” to vertically stack storage bins in grid. This allows robots positioned at the top to retrieve the bins when needed. Ocado has developed a system where robots move around a vertical grid, which it calls a “Smart Platform.”

But AutoStore has sued Ocado in the UK and the US, with additional actions commenced by Ocado here, as well as in the Mannheim and Munich courts.

In the UK, the case reached the Court of Appeal where the judges upheld a first-instance decision which refused an injunction against AutoStore. In May 2021, Ocado had obtained an ex-parte injunction preventing AutoStore from referring to certain evidence in the ITC proceedings. However, the UK Court of Appeal dismissed Ocado’s appeal in a two to one majority.

A UK trial over six patents will commence in March 2022. In the UK, another entitlement action is also ongoing over several Ocado patents. Before the patents were filed, Ocado was an AutoStore customer – now AutoStore is arguing that the concepts disclosed in those patents are AutoStore’s concepts, relating to how robots move around and retrieve containers from grid systems, and a safety feature.

In Germany, the UK company sued the AutoStore on the basis of two utility models. Ocado filed two suits in Mannheim (case ID: 2 O 27/21 and 7 O 36/21). Two proceedings are also pending in Munich (case IDs 7 O 3904/21 and 7 O 3905/21).

Find out more on the case and its advisors here.

 

Bayer blockbuster Xarelto enjoys surprise success at EPO

The ruling secures Bayer a large sum for the next 18 months

Xarelto, Bayer

The EPO Boards of Appeal has reinstated the dosing patent for Bayer thrombosis blockbuster drug, Xarelto ©Aleksey Khripunkov/ADOBE STOCK

The hearing over Xarelto was one of the largest EPO Boards of Appeal hearings of the year. Originally, eleven opponents fought against EP 18 45 961, which the EPO then invalidated at the first instance due to lack of inventive step.

However, in a surprise move the EPO Boards of Appeal reinstated the dosing patent for Bayer’s thrombosis blockbuster drug. Until shortly before the decision, it was still unclear which way the trial would go.

The patent describes a dosage for Bayer’s thrombosis drug, with active ingredient rivaroxaban. The dosing patent says, in essence, that taking a single tablet per day is sufficient. Before the patent was granted 15 years ago, patients tended to take two tablets per day.

Bayer argued that taking only one tablet was both more convenient for the patient, and had a sufficient effect. At the trial, Bayer detailed why a medical expert could not have foreseen this.

Surprisingly, the EPO Boards of Appeal have thus completely reinstated the dosing patent for Xarelto This decision is a major economic success for the German pharmaceutical company – now, the high-selling and high-value drug will have market exclusivity for another year and a half.

Find out more on the case and its advisors here.

 

Dabus goes global in pursuit of recognition

The UK, USPTO, EPO, Germany, South Africa and Australia are involved over AI inventorship case

Dabus

Recent decisions on AI patenting from Australia and South Africa are important for Dabus. But the AI sytem still requires solid recognition from offices such as the EPO to succeed in its mission ©sdecoret/ADOBE STOCK

Stephen Thaler’s attempts to get his Dabus system recognised as an inventor in its own right is a flagship AI case. Over several years, Thaler has approached courts in Europe, as well as patent offices around the world, to recognise his AI system as the inventor of two patents, EP 35 64 144 and EP 35 63 896, which concern a fractal beverage container and fractal light signals.

So far, Thaler has been mostly unsuccessful in Europe. The UK High Court, and then the UK Court of Appeal, upheld previous judgments from the UKIPO, the EPO and then the UK High Court which all decided that a patent application cannot name Dabus as an inventor in its own right. The US Patent and Trademark Office (USPTO) also upheld this view.

However, a recent decision by the German Federal Patent Court has pointed a way forward in the debate surrounding how inventions by AI-created machines can be correctly registered. The person behind the process must be named as the inventor on the inventor form, which may be supplemented by the artificial intelligence system.

Furthermore, in Europe a lack of unanimity between the UK Court of Appeal judges suggests a possible changing of the tide. Richard Arnold and Elisabeth Laing agreed that Thaler’s patent applications were impermissible due to not listing a ‘natural person’ as an inventor. But presiding judge Colin Birss noted that Thaler, in his view, has “complied with his legal obligations.”

Birss agreed that an inventor must be a person, but dissented from the majority view. He noted that the case was essentially regarding “the correct way to process patent applications through the patent office.” As such, Birss considered that Thaler should receive a patent for essentially following the procedures and processes correctly.

Elsewhere, the South African patent office, as well as the Federal Court of Australia, have accepted that an AI system can be designated as an inventor on a patent application.

Watch this space for the outcome of an appeal to the UK Supreme Court, and the findings of a UK Intellectual Property Office (IPO) call for views on the patenting of AI. Whatever the final decision, Dabus is clearly shifting the narrative of jurisprudence for future inventions.

Find out more on the case and its advisors here.

 

Eli Lilly shapes French case law on damages in pemetrexed case

Long-running, multi-jurisdictional battle takes a new turn in France

provisional damages, pemetrexed, Eli Lilly, Zentiva, patent litigation

The Paris Court of Appeal confirmed Eli Lilly’s PI against Zentiva for its pemetrexed cancer drug Alimta ©Elnur/ADOBE STOCK

Earlier this year, a Paris Court of First Instance decision in the case involving Eli Lilly’s chemotherapy drug pemetrexed against generics manufacturers was a thunderclap. In the case against Zentiva, the court set the provisional sum of €4 million in damages. This is a large claim for damages by French standards.

But then in November, the Paris Court of Appeal backpedalled. Now, Zentiva does not have to pay, because the court considered the damages issue to be part of the merits hearing and not the PI proceedings.

Nevertheless, the second-instance decision was also a win for Eli Lilly, because the court upheld the preliminary injunction. Thus, Zentiva is still not allowed to enter the market because its generic drug infringes EP 13 13 508.

In the parallel German proceedings, Eli Lilly succeeded in preventing generics manufacturers Hikma and Zentiva from selling their imitation products. The Higher Regional Court in Munich confirmed the first-instance infringement decision. However, this also affected Stada, which did not appeal.

On the validity side, the court has confirmed the patents in Germany. With this year’s ruling, the parties have also settled their infringement disputes. However, it remains unclear whether the case in Germany is coming to an end. The question of damages remains open. However, numerous generics companies were on the market between 2018 and 2020.

Naturally, the dispute is important on economic level for the companies involved. But its concern with treatment for certain types of breast and lung cancer mean the dispute also has real-world consequences. As a drug which can alleviate the side effects of chemotherapy, pemetrexed is very important indeed.

Find more information about the French dispute and its advisors here.

 

G 1/21 referral puts video conferencing in spotlight

Over 2021, patent attorneys eagerly awaited the outcome of a Boards of Appeal referral, regarding permissibility of video conferencing without party consent 

Patent firm alliance, Germany

Oral proceedings via video are now the reality at the EPO and its Boards of Appeal. But patent attorney firms and companies, especially those based in Germany, are questioning the legal basis of compulsory oral hearings ©aerogondo/ADOBE STOCK

Over 2021, referral G 1/21 has perhaps garnered the most interest among the entire European patent community. Now the EPO has finally – almost – concluded that while video conferencing is compatible under the European Patent Convention, in-person proceedings are preferable.

The EPO began conducting oral hearings in early 2020, in order to avoid a backlog of cases during the coronavirus pandemic. However, in March 2021, electronics firm Rohde & Schwarz referred the question “[can] oral proceedings under Article 116 EPC be replaced by a video conference without the parties’ consent?” to the Enlarged Board of Appeal.

In July, the EPO confirmed that compulsory video conferencing is admissible in appeal proceedings under the European Patent Convention “in a general emergency”. But critics observed that the order did not address whether the EPO can hold video proceedings without party consent if the current period does not constitute a general emergency; or whether first instance examination or opposition proceedings can be held via video without the consent of the parties.

October provided more clarity. The Enlarged Board of Appeal determined that compulsory video conferencing is compatible with Article 116 EPC. However, since T1807/15 is an appeal case, the EBA has jurisdiction only to decide on appeal cases before the EBA, rather than general EPO opposition proceedings. The decision also notes that the EBA desires to move back to majority in-person proceedings where possible.

In general, patent attorneys seem satisfied with the EBA’s contention that video conferencing is a legitimate format in which to hold proceedings. Many involved in the European patent market, and especially patent attorneys situated away from the EPO’s main hubs of The Hague or Munich, have reacted positively to this news. Some firms see the proliferation of video hearings as evening the playing field among patent firms distributed across Europe.

However, the BoA seems to be aligning itself with a consensus among international courts that video conferencing is not a default option. Furthermore, there remains concern over what G 1/21 means for first-instance EPO opposition proceedings. Despite its ostensible ‘final decision’, it’s unlikely we’ve seen the last of the discussion on video hearings at the EPO.

Find out more on the case and its advisors here.

 

Hanwha Q-Cells and Longi go pan-European over solar panels

Dutch ruling sets a new standard for cross-border injunctions in Europe

Rotterdam District Court granted a cross-border injunction for nine countries in the dispute between Hanwha and Longi over solar panels ©am/ADOBE STOCK

In mid-October, the Rotterdam District Court rendered a remarkable judgment. It ruled that Longi Netherlands may no longer offer several of its solar panel models in nine European countries. The Longi products infringed European patent EP 22 20 689 B1, held by Hanwha Q-Cells.

The ruling is interesting because the Hanwha patent is valid in 16 European countries, but not in the Netherlands. Nevertheless, the court issued a cross-border injunction for Belgium, Bulgaria, Germany, France, Liechtenstein, Portugal, Spain, the UK and Switzerland (case ID: C/10/621252 / KG ZA 21-563).

The court heard the appeal on 20 December. The court intends to announce the judgment at the beginning of March. At the hearing, it became public that Hanwha Q-Cells had in the meantime enforced the first-instance judgment.

Globally, EP 689 B1 is valid in the US and Australia. It protects a solar cell with two surface-passivating dielectric layers on a silicon substrate. The layers should reduce the efficiency losses of the solar cell, and to significantly increase the output of the solar cell.

In 2020, a first-instance decision at the Regional Court of Düsseldorf found that Longi, along with its competitors Jinko Solar and REC Group, had infringed the German part of European patent EP 689. And parties are also conducting parallel patent proceedings in France, Australia and the US. The two companies are also battling in opposition proceedings before the European Patent Office.

Cross-border injunctions in PI proceedings are a specialty of the Dutch courts. Other European courts do not generally issue cross-border injunctions. However, the Dutch courts only issue these against Dutch companies, and usually only if there is also a valid Dutch patent.

With this decision, the Dutch court may have set a new standard for cross-border injunctions. However, the battle for solar panels is not likely to end quickly. Other manufacturers and distributors of the technology are also currently litigating before European patent courts, such as SolarEdge against SMA Solar and against Huawei.

Find out more on the case and its advisors here.

 

InterDigital vs. Xiaomi ruling in Germany ends global ASI litigation

The first ASI wave culminated in a bitter battle over anti-suit injunctions. Six months later, pre-emptive ASIs are in fashion

InterDigital, Xiaomi

Munich Regional Court’s new civil chamber is hearing more ASI cases ©dudlajzov/ADOBE STOCK

Over 2020 and 2021, patent experts have followed the ever-developing battle over anti-suit injunctions between Xiaomi and InterDigital. It  reached its peak in February 2021, following a decision from the Munich Regional Court. The court rendered its noted AASI and AAAASI judgment, setting for the first time a fourfold ASI in Germany (case ID: 7 O 14276/29). It also prohibited Xiaomi from enforcing an anti-suit injunction issued by the Wuhan Intermediate People’s Court against InterDigital in Germany.

Furthermore, the judges ruled that the court could see implementers in FRAND disputes filing ASIs in China, or elsewhere, as unwilling licensees. This reduced the prospects for Xiaomi and other implementers to successfully defend against infringement suits in the future.

The prospect of risking an injunction and a sales stop in Germany quickly had an effect on global FRAND disputes. Parties rarely filed anti-suit injunctions in Germany. Such suits were practically dead.

But an ASI battle between Interdigital and Xiaomi came about after failed licensing negotiations between the companies. As a result, Xiaomi sued for a global FRAND licence in Wuhan. In September 2020, the Wuhan court issued the ASI and AAASI. A few weeks later, Interdigital countered with an AASI and AAAASI from the Delhi High Court and then filed the same applications in Munich.

In August 2021, InterDigital and Xiaomi signed a global licensing agreement and ended their global disputes.

ASIs, especially from US and Chinese courts, have experienced a hype following a 2019 dispute between Nokia and Daimler over connected cars patents. In the first six months of 2021, the Regional Court Munich was the go-to court in Germany for global ASI disputes. Numerous SEP holders file AASI applications here against ASI rulings from China.

Now towards the end of 2021, pre-emptive ASIs against implementors seem to be the new magic bullet in global FRAND disputes, according to lawyers. Although these are technically anti-anti-suit injunctions, they are often referred to as pe-emptive ASIs.

In another case, the Munich Regional Court issued an AASI against Huawei at the request of IP Bridge. The UK High Court also issued an AASI in Philips v. Xiaomi. However, the ruling was never published.

Find out more on the case and its advisors here.

 

Meril and Edwards fight over transcatheter heart valves

The live-saving technology is a matter of public interest

Edwards Lifescience, Meril Lifesciences

All patents owned by Edwards Lifescience cover minimally invasive heart valves ©Damian/ADOBE STOCK

In another pan-European dispute, medical device manufacturers Edwards Lifesciences and Meril Life Sciences are locked in a battle over transcatheter heart valves. At the core of the defence is the question of public interest.

The dispute spans over ten jurisdictions and numerous patents. Cases are currently pending in the UK, Germany, France, the Netherlands, Italy and Spain.

A UK court issued an initial ruling in autumn 2020, which found that Meril infringed a valid patent. The court found other patents infringed but partially invalid. Meril argued that, on public interest grounds, the court should not exclude its products from the UK market. The courts then scheduled a hearing on this for October 2021, but the judge vacated the trial because Meril submitted to an injunction. Appeal proceedings concerning the infringed and valid patent remain pending.

Furthermore, Meril used the public interest argument in the German proceedings. In autumn 2020, Munich Regional Court issued a preliminary injunction prohibiting the Indian medical technology manufacturer from marketing its products in Germany. Meril then turned to the Federal Patent Court to request the granting of compulsory licences for five of the disputed patents.

Meril argued that Edwards Lifesciences’ heart valve did not cover the oversized and undersized products. Therefore, according to Meril, there is a public interest in its products. But the judges dismissed the application for compulsory licences. In Germany, Edwards Lifesciences has since withdrawn all infringement claims after Meril signed cease and desist declarations.

In France, the main proceedings are pending before the Paris first instance court, with an oral hearing scheduled for April 2022. While Bird & Bird is active for Edwards Lifesciences, Meril is represented in France by a team from Gide. At the same time, oppositions against some of the patents-in-suit are pending at the EPO.

Find more information about the cases and advisors here (Germany). and here (UK).

 

Nokia faces Oppo on FRAND and jurisdiction

Another global SEP battle begins in earnest between implementers

In 2021, Nokia sued Oppo in seven jurisdictions ©Sundry Photography/ADOBE SOTCK

In the summer 2021, Nokia initiated legal action in France, Germany, India, Indonesia, Spain, Russia and the UK. The suits centre on a mix of cellular standard-essential patents (SEPs) and implementation patents covering connectivity, user interface and security technologies and are some of the first major global 5G battles.

Finnish telecommunications giant Nokia filed multiple complaints against Chinese smartphone manufacturer Oppo. In Germany alone, 24 complaints are pending. Of these, seven are at Munich Regional Court, eleven are pending at Mannheim Regional Court, and six are pending in Düsseldorf. Nokia is also enforcing seven SEPs in Germany. The Finnish company had already enforced two SEPs against Daimler. Nokia has also filed six implementation patents.

In the UK, Nokia sued over three SEPs and one implementation patent. Oppo requested a stay of proceedings in the UK pending a decision in a parallel case in China, in which the Chinese mobile manufacturer seeks a global portfolio licence from Nokia. In a ruling in November, the UK High Court rejected Oppo’s request for a stay.

Nokia also asserted two implementation patents in Spain and France. In some cases, Nokia sued over the same patents in several countries. In addition, the high number of lawsuits is also due to the fact that Nokia sued Oppo and OnePlus at the same time over the same patent.

Nokia is pursuing allegations that Oppo infringed its patents. The Finnish telecoms company claims this came about due to a breakdown in the renewal of a licence agreement between the two companies. According to JUVE Patent’s research, the Chinese smartphone vendor Oppo signed a patent licensing agreement in 2018 to pay for its use of Nokia’s industry-leading patent portfolio. The agreement expired at the end of June 2021.

Advisors in the case

In the UK and Germany, Bird & Bird is leading the proceedings. For the German disputes, the firm is cooperating with Arnold Ruess and the patent attorneys of Cohausz & Florack and Samson & Partner.

In France, Nokia also has good relations with Bird & Bird. This time, however, Allen & Overy came into play because Nokia only sued over implementation patents in France. When it comes to SEPs, the firm is usually conflicted for Nokia because the European patent practice is closely linked with another SEP holder, Huawei.

In Spain, the market considers Clifford Chance as another set player for Nokia. In Russia, Nokia is relying on Baker McKenzie while Anand & Anand is running the Indian cases. Suryomurcito runs the claims in Indonesia.

On the other hand, counsel for Oppo and One Plus have long remained secret. The Chinese mobile phone manufacturer is just entering the European markets, and as such SEP holders have not yet sued the company.

In the first case against Nokia at the UK High Court, a team from Hogan Lovells was on the side of the Chinese mobile manufacturer. The firm is also representing Oppo in Germany, France, Spain and Russia in the dispute against Nokia. In Germany, a mixed team from Hogan Lovells is on the case.

Its patent attorneys are also leading some of the validity proceedings. Patent attorney firm Maikowski & Ninnemann is leading other parts of the validity proceedings. JUVE Patent is also aware, via market information, that Bardehle Pagenberg leads several offensive proceedings, where Oppo is the claimant, in Germany.

JUVE Patent will publish more information on the case and its advisors in 2022.

 

Phoenix Contact against Harting leads to CJEU referral

Another CJEU referral from Germany, this time over industrial connectors

Nokia and Daimler

The Court of Justice of the European Union in Luxembourg is a key forum for patent disputes ©nmann77/ADOBE STOCK

At first glance it looked like your average patent infringement case as Phoenix Contract and Harting went head to head at Munich Regional Court. The case concerned patents for a plug connector comprising a protective conductor bridge.

But the dispute posed an important question that the Munich judges referred to the CJEU. Namely, if a patent-in-suit is not yet proven in opposition or nullity proceedings, can a court refuse a preliminary injunction? Now Munich Higher Regional Court’s case law, and the patent courts in Mannheim and Düsseldorf, are under scrutiny.

Phoenix Contact applied to the Munich Regional Court for a preliminary injunction. However, the judges did not regard themselves as being in a position to grant it, though the court did not doubt the validity of the patent. This is due to the Higher Regional Court Munich case law.

According to a judgment in another case by the second-instance court, in order to grant a preliminary injunction, nullity proceedings must also prove the patent. Previously, the Higher Regional Court Düsseldorf had reached a similar conclusion.

In its referral judgment on PI proceedings, Munich Regional Court considers this legal interpretation to be contrary to European law by contradicting Directive 2004/48/EC. German law also makes no reference to the fact that a procedure on validity is a prerequisite for a PI. This is noted by the Munich judges in their decision to refer the case to the CJEU.

Find more information on the cases and advisors here.

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