IPR, EPO Opposition and UK Litigation

We report here on what appears to be one of the first IPR cases to have corresponding validity challenges in other jurisdictions, namely Europe at the European Patent Office (EPO) and in the UK courts. The decisions, despite being the same patent family differ remarkably.

US The US decision in question has previously been discussed here http://www.aiablog.com/post-grant-proceedings/ptab-judge-issues-first-dissent-on-claim-construction/. Smith & Nephew Inc. filed an IPR against Convatec Technologies Inc. in December 2012. The patent in question, US 7,267,828, relates to a method of preparing a light stabilized antimicrobial material for use in wound dressings and medical devices. PTAB’s written decision (IPR2013-00102) entered on 29 May 2014, held that all 32 challenged claims of Convatec’s US patent were unpatentable either for anticipation or obviousness. It further rejected Convatec’s attempt to amend the claims.

UK In the UK High Court of Justice, Smith & Nephew also challenged the validity of Convatec’s corresponding UK patent, the UK designation of EP1343510. Remarkably, during the first instance proceedings Convatec conceded that the unamended patent was invalid. However, they also requested an amendment to the claims. In the written decision issued June 2012 ([2012] EWHC 1602 (Pat)), the amendment to the patent was permitted and it was ruled that the patent in amended form was valid. The prior art documents cited in the UK decision, “Kreidl” and “Gibbins ‘751”, were also used in the corresponding IPR.

An appeal was filed against this ruling by Smith & Nephew, but this was dismissed in the Court of Appeal written decision of December 2012 ([2012] EHWC 1602 (Pat)) and the validity of the patent in amended form confirmed.

EPO Smith & Nephew also filed an opposition in November 2011 against Convatec’s European patent (EP1343510). The same prior art as cited in the UK (and US proceedings), “Kreidl” and “Gibbins”, was also used. Convatec introduced the positive written decision from the UK courts and corresponding claim amendments. The Opposition Division decided in December 2012 that the patent in this amended form was valid.

However, following an appeal by Smith & Nephew, the EPO Board of Appeal in November 2013 dismissed the decision and sent the case back down to the Opposition Division to consider other substitute (auxiliary) claim sets which Convatec had previously proposed but which were not examined (due to the success of their first choice amended claim set). An Oral Hearing for the second opposition has been scheduled for 16 October 2014 in The Hague, Netherlands. The preliminary opinion of the Opposition Division does not consider any of the Auxiliary claim sets to be allowable. Any decision from this hearing will be appealable, accordingly the situation in Europe may still have a long way to go before reaching a conclusion.

While Europe, in particular the EPO, arguably has stricter added matter (written description) requirements, it appears that the different outcomes so far in these challenges can at least in part be attributed to the greater flexibility in Europe for submitting auxiliary claim sets.