JUVE Patent’s top 10 patent cases in Europe 2024

·Historic FRAND ruling despite settlement in Panasonic vs Oppo

·Bayer’s rollercoaster defense of Xarelto

·VoiceAge vs HMD: EU Commission intervenes in FRAND jurisprudence again

·Second round for CJEU in BSH vs Electrolux

·Intellectual Ventures: Another defeat in Paris, settlement in Germany

·Paris court revokes Sanofi cabazitaxel patent

·Edwards deals severe blow to Meril with core advisors

·NanoString vs 10x Genomics: UPC case law in the making

·Italian Supreme Court interprets Bolar exemption

·CJEU decision in SPC battle leaves questions open

 

 

Oppo infringed Panasonic SEP says local division Mannheim in the UPC’s first ever FRAND ruling. The parties had previously agreed to settle the case.

 

Since August 2023, Panasonic has filed eight national and twelve UPC lawsuits against its competitors Oppo and Xiaomi. All patents-in-dispute are relevant for the WCDMA and LTE standards.

 

In a surprising turn of events, the local division Mannheim banned Oppo from selling certain mobile devices in the UPC territory. The November ruling from Mannheim came despite Panasonic and Oppo having already agreed, in principle, to settle their global patent dispute.

 

The four UPC judges around presiding judge Peter Tochtermann ruled that Oppo infringed Panasonic’s EP 2 568 724. They also dismissed Oppo’s nullity action against EP 724 (case ID: ACT_545551/2023 UPC_CFI_210/2023. Most significantly, the Mannheim judges rejected Oppo’s FRAND counterclaim as admissible but unfounded. In their opinion, Oppo had not behaved in a FRAND-compliant manner.

 

The FRAND part of the judgment dealt with issues such as how the UPC should interpret the CJEU’s Huawei vs ZTE ruling, and FRAND rate-setting. The reasoning also mentions the UPC’s relationship with the UK court and the European Commission’s amicus curia brief filed in VoiceAge vs HMD at the Higher Regional Court Munich. Apparently, the judges felt the need to comment extensively on FRAND.

 

The UK Court of Appeal had recently found Panasonic an unwilling licensor and obliged the company to accept an interim licence for Xiaomi. Although Oppo did not join this claim, it nevertheless had an impact on the UPC case in Mannheim.

 

However, given the two companies had already agreed on a settlement, the economic implications of the Mannheim decision are no longer as far-reaching. Shortly before Christmas, the settlements between Panasonic and Xiaomi and Oppo respectively were formally finalised. Panasonic withdrew its lawsuits, as can be seen from orders by the local division in Munich.

 

 

Bayer’s fight for its blockbuster drug resembles a rollercoaster ride. After successfully defending Xarelto in some national courts, the end of the year saw a defeat against the IFA.

 

For years Bayer has been fighting tooth and nail for its blockbuster Xarelto. Its successful patent protection secures Bayer millions in additional revenue every day. In April 2024, the basic patent EP 1 261 606 for active ingredient rivaroxaban expired in Europe, but the company still has a dosage patent with which it can monopolise the market until January 2026 – so long as patent courts continue to rule in its favour, of course.

 

In 2021 the EPO Boards of Appeal had reinstated the dosage patent, thus overturning a decision by the Opposition Division. In 2024, courts in Munich, Paris and The Hague handed down decisions. The German and Dutch courts agreed with Bayer on the essential points, thus preventing generic drug manufacturers from entering the market with patent-infringing products. However, two national courts saw things differently.

 

These proceedings have one key question at their core: can the fact that patients must only take this medicine once a day be classed as an invention? The search for answers becomes a lesson in the interplay of regulations and procedures. However, an attempt to hold the IFA, the information service for medicines, liable for infringing the dosage patent, recently failed at the Munich Higher Regional Court.

 

 

VoiceAge vs HMD: EU Commission intervenes in FRAND jurisprudence again

 

In the dispute between VoiceAge and HMD, the EU Commission sets out its FRAND view in an amicus brief. The Higher Regional Court Munich countered with a new approach to the willingness of licensees.

 

The European Commission has intervened in patent wars once before — ten years ago, when it criticised German FRAND jurisprudence. In the dispute between Huawei and ZTE, the Regional Court Düsseldorf made a referral to the CJEU. It resulted in the well-known judgment from the highest European court, which continues to shape FRAND case law in Europe to this day.

 

The EU Commission intervened once again, this time in the dispute between VoiceAge and HMD over speech-coding standard EVS. It submitted a statement in an amicus curiae brief. Above all, the EU Commission is dissatisfied with the current jurisprudence of the Regional Court Munich.

 

The Commission’s interference in another European SEP and FRAND law caused a great deal of discussion among experts. The 6th civil senate of the Higher Regional Court Munich under presiding judge Lars Meinhardt responded to this with a legal notice introducing a new approach regarding the willingness of a licensee (case ID: 6 U 3824/22 Kart).

 

The legal notice is based on the infringement proceedings between VoiceAge and HMD regarding EP 2 102 619. It is one of a total of five SEPs over which the two parties have been fighting bitterly for years. FRAND is at the heart of the dispute. According to previous case law, which focuses primarily on the conduct of a potential licensee, a patent user is almost always considered unwilling, especially before the Munich Regional Court.

 

According to the legal notice, the Higher Regional Court Munich will now also take a closer look at the patent holder’s licence offer. The requirement for a “continuing willingness to take a licence” is met in the eyes of the court only if an implementer provides reasonable security. They can do this, for example, with a bank guarantee.

 

In 2019, VoiceAge sued HMD over five patents in Mannheim and Munich. So far, most of the judgments have been in favour of the plaintiff. The Higher Regional Court will certainly attract much attention when it delivers its appeal judgment on the infringement of EP 619 on 6 February 2025.

 

 

If the Grand Chamber of the CJEU follows the Advocate General in a dispute over jurisdiction, this could give European courts more competence in patent infringement proceedings.  

 

The dispute between the German company BSH Hausgeräte and the Swedish company Electrolux is currently in its second round at the CJEU. The Grand Chamber must decide whether a Swedish court can rule on the parts of a European patent that have not been validated for Sweden when it comes to invalidity arguments.

 

BSH and Electrolux have fought in Germany and Sweden since the beginning of 2020. In Sweden, BSH’s infringement action covers the German, Austrian, Spanish, French, UK, Italian, Dutch, Greek, and Turkish parts of a patent covering a vacuum cleaning technology. Electrolux contended that the Stockholm Patents and Market Court should dismiss that action regarding the non-Swedish parts of the patent. The company has also filed a nullity suit in Germany, among other countries.

 

CJEU’s Advocate General Nicholas Emiliou issued a second opinion in September. He takes the view that a patent infringement action arising from all of a plaintiff’s worldwide patents can be asserted at the seat of an EU defendant. At the same time, the Advocate General is of the opinion that a national European court can decline jurisdiction for an action for a declaration of invalidity of a non-European patent. The latter is a solution to avoid abuse of the European courts by plaintiffs.

 

The court’s decision could impact cross-border patent proceedings in Europe. If the CJEU agrees with Nicholas Emiliou’s opinion in its judgment, European courts would have greater competence in patent infringement proceedings. This could significantly increase competition between patent courts in Europe.

 

 

In the years-long battle over SEPs, the NPE saw a defeat in an appeal in France and a rather anticlimactic end in Germany.

 

Intellectual Ventures has been locked in a bitter dispute against various telecommunications companies for years. A large number of lawyers have been litigating in Germany since 2015 and in France since 2017 over several patents protecting mobile communications standards. In 2024 the dispute came partly to an end.

 

In Paris, Intellectual Ventures filed suits against Orange, Bouygues Telecom and SFR. Furthermore, Huawei, Sagemcom, ZTE and Sercomm (equipment suppliers to Orange) also joined the suit as voluntary interveners. In the first instance, the Judicial Court found two of the three patents-in-suit invalid, and dismissed the infringement claim against the third. In summer this year, the court of appeal declared a patent belonging to the NPE as invalid and not infringed, thereby confirming the first-instance decision from 2021.

 

In Germany, after nine years, what was one of the biggest patent battles before German courts came to a rather anticlimactic end. Early in spring Intellectual Ventures and the three major network operators Deutsche Telekom, Telefonica/O2 and Vodafone settled their long-running dispute.

 

 

Sanofi’s chemotherapy drug Jevtana is revoked in one of the year’s most important classical pharma patent battles.

 

In September, the Judicial Court of Paris revoked Sanofi’s EP 2 493 466 on the grounds of inter alia obviousness, in view of prior Phase I and II clinical data on cabazitaxel and an ongoing Phase III trial on the claimed indication. The suit concerns the active ingredient cabazitaxel for treating prostate cancer, better known under the commercial name Jevtana.

 

This is a setback for Sanofi in the dispute with generic drug companies over its chemotherapy drug. Moreover, French judges’ rulings in pharmaceutical disputes over fingolimod and dimethyl, and now cabazitaxel, show their expectations regarding inventive step. French judges continue to position themselves in favour of generics.

 

In May, Sanofi had filed a UPC lawsuit for the same drug with a team from Herbert Smith Freehills led by Laura Orlando. This is one of the first classic pharmaceutical cases in the constellation of originator versus generics company.

 

 

Edwards Lifesciences scores first major permanent UPC injunction in heart-valve mega-battle with Meril Life Sciences.

 

Edwards Lifesciences and Meril Life Sciences have been battling over heart valves in various courts around the world for some time. A great deal of money is at stake, and a quick end is not in sight. In November, however, Meril felt the full force of the UPC.

 

In a lawsuit filed by Edwards Lifesciences, the UPC local division Munich ruled that Meril Life Sciences may no longer sell its heart valves in UPC territory. The panel around presiding judge Matthias Zigann found Meril infringes Edwards’ important EP 3 646 825 with its current Myval Octacor transcatheter heart valves.

 

The consequences are drastic for the Indian medical device manufacturer. The judgment applied immediately (case ID: UPC_CFI_15/2023) without Edwards having to provide security or formally enforce the judgment. Directly after the ruling Meril announced not only that it would an appeal but also that it would launch a new version of its heart valves.

 

After facing off in the European patent courts for years, Edwards took the dispute to the UPC in 2023. The company sued Meril for infringing four of it’s patents – twice at the Munich local division and the Nordic-Baltic regional division respectively. A counterclaim for infringement has also been pending at the Paris central division since July 2024.

 

The dispute hit the headlines in summer when the central division in Paris handed down its first revocation ruling upholding EP 825. The court rejected a revocation action and two counterclaims of revocation from three subsidiaries of Meril. Following the ruling, the Munich local division was able to proceed with Edwards’ infringement action. The dispute will keep the opponents and numerous law firms busy for some time to come.

 

 

In one of the UPCs first major patent battles, the Court of Appeal in Luxemburg gives the first-instance divisions strict guidelines for issuing a PI.

 

It was one of the first major cases filed at the UPC. In the court’s initial days, 10x Genomics applied for a PI against NanoString‘s CosMx Spatial Molecular Imager instruments and CosMx reagents for RNA detection in the UPC jurisdictions. The US-based company alleges that the use and distribution of NanoString’s CosMx products infringe European patents EP 4 108 782 and EP 2 794 928. Both patents belong to Harvard University and protect a spatial profiling technology.

 

The Munich local division issued an injunction against NanoString in September 2023. NanoString appealed the decision, resulting in the UPCs first ever hearing in December 2023. Early this year the Court of Appeal under President Klaus Grabinsky issued a landmark decision, overturning the PI.

 

The judges found it likely that the patent-in-suit EP 782 would be declared invalid in the main proceedings. This meant there was no basis for the PI (case ID: UPC_CoA_335/2023). Therefore, NanoString was now allowed to sell its CosMx Spatial Molecular Imager (SMI) instruments and CosMx reagents for RNA detection again in Europe. With this ruling, the Court of Appeal gave the UPC first-instance divisions strict guidelines for issuing a PI: they may only grant a PI if they have checked that a patent is highly likely to be valid. This question played a role just one week after the historic Court of Appeal ruling in the PI dispute between Ortovox and Mammut over avalanche rescue devices.

 

In August 2024, 10x Genomics then failed in its application to the UPC to reopen the PI proceedings against NanoString. In October, the central division Munich revoked one of the patents-in-suit and also ruled on the issue of lis pendens.

 

 

In July, it was the first European supreme court to interpret the exemption.

 

The Bolar exemption allows companies to research generic drugs with active pharmaceutical ingredients (APIs) while the originator’s patent is still in force, thus enabling them to enter the market directly when patent protection expires. But the current version is very narrowly defined and does not explicitly include the manufacturers of APIs if they do not also manufacture generic medicines themselves. Only large companies such as Teva can manufacture the APIs and also develop the generic drugs.

 

This creates a problem for smaller generics manufacturers that want to submit generic medicines for market authorisation but cannot produce the APIs themselves.

 

In early July, the Italian Supreme Court found Sicor and its parent company Teva are infringing Boehringer Ingelheim’s patent and the associated SPC for the active ingredient tiotropium bromide (case ID: 2224/2022).

 

The judges considered it to be a fact that, although Sicor and Teva had produced the active ingredient tiotropium bromide and offered it for sale via their website, there had been no specific requests from generics manufacturers wanting to develop generic versions of the drug.

 

Following the court’s ruling, it remains the case that manufacturers of APIs may not simply produce them and offer them on the market. Nevertheless, the court decided in favour of a broad interpretation of the Bolar exemption.

 

 

Shortly before Christmas the CJEU handed down a long-awaited decision on the interpretation of the SPC regulation.

 

For years, MSD has been in dispute with various generic drug manufacturers in several countries over its drugs Janumet and Inegy. Both cases boil down to the scope of the EU SPC regulation regarding combination drug products.

 

In 2021 and 2022, both the Finland Market Court and the Supreme Court of Ireland referred questions to the CJEU, seeking clarification regarding the interpretation of Articles 3(a) and 3(c) of the SPC regulation. The Finnish case concerns MSD’s diabetes drug Janumet based on the combination of sitagliptin and metformin (case ID: C-119/22). The Irish case concerns MSD’s cholesterol drug Inegy, based on the combination of ezetimibe and simvastatin (case ID: C-149/22). SPCs protect the combination of active ingredients for both products. Teva has attacked Janumet, while Clonmel has attacked Inegy. Since both cases concern very similar questions, the court has combined the referrals.

 

In its decision issued just before Christmas 2024, the CJEU overall followed the opinion of the Advocate General published in June. While taking a clear stance as to the interpretation of Article 3(c), the ruling of the CJEU regarding Article 3(a) potentially opens the door to new questions.

 

This decision will also have an impact on pending proceedings. In the case of Janumet, MSD has been battling Teva not only in Finland, but also in Germany and France. Multiple parallel proceedings have been ongoing across Europe, including in Belgium, Portugal, Greece, Italy, and the Czech Republic. Concerning Inegy, MSD has also been litigating in Germany and France in addition to Ireland.