Case Nos. O2021_009 / O2021_010 | Hearing of 17 April 2023 | ‘Antioxidants; IR-A’
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WHAT YOU NEED TO KNOW
Ultrasun sued Stada for nullity of EP(CH) 127 and EP(CH) 105. Judge-rapporteur’s preliminary expert opinion: Patents as granted invalid; patentable subject-matter in lower-ranking requests. Stada disputes admissibility of some of Ultrasun’s arguments / lines of attack submitted only in response to the expert opinion. Judgment of the Swiss FPC can be expected within the next 3-5 months. Oral proceedings before the OD in co-pending opposition proceedings at the EPO scheduled for 27 June 2023 and 4 July 2023, respectively. Ultrasun is not a party at the EPO. |
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Ultrasun seeks annulment of two Stada patents, i.e.
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- EP(CH) 2 233 127 B1 (see EPO Register and Swissreg for further information); and
- EP(CH) 1 591 105 B1 (see EPO Register and Swissreg for further information)
The patents in suit relate to sun protection agents.
Historically, skin protection against UV light was in focus. But only less than 10% of the solar spectrum is ultraviolet radiation; UVC is blocked by the ozone layer anyway. The visible region covers about 40% of the solar spectrum; infrared radiation is the largest part.
According to the International Commission on Illumination (cie), the infrared radiation is split into three bands, i.e. IR-A (780 nm to 1’400 nm), IR-B (1,4 μm to 3,0 μm), and IR-C (3 μm to 1 mm).
Infrared radiation is what the patents in suit are all about. More specifically, they pertain to the use of antioxidants to protect the skin against damage caused by near infrared radiation, i.e. IR-A. Stada’s Ladival series of products comes along with a prominent claim of protection against IR-A.
Announcement of the hearing
The official announcement of the hearing already provided an extensive list of prior art documents and arguments. In addition to unallowable amendments and insufficiency of disclosure, Ultrasun asserts that the subject-matter of the patents is anticipated by the following documents:
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- DE 100 20 447 A1;
- WO 98/01107 A2;
- WO 98/55075 A2;
- FOCUS Magazin Nr. 29/031;
- Schieke et al., Journal of Investigative Dermatology 2002, S. 1323-1329 2002;
- Schröder et al., Journal of Investigative Dermatology 2004, Abstract 837;
- DE 100 63 433 A1;
- US 6,623,769 B1;
- US 2003/0091518 A1;
- FR 2 802 421 A1;
- WO 02/081027 A1;
- WO 02/45728 A1;
- WO 01/85182 A2; and
- WO 03/086329 A2.
Further, Ultrasun holds that the claimed subject-matter was (at least) obvious in view of three of these documents, i.e. Schieke et al. 2002, Schröder et al. 2004 und WO 03/086329 A2.
In written proceedings, Stada sought dismissal of the action in its entirety as to EP(CH) 127 and maintenance of EP(CH) 105 in a limited version. In the reply, Ultrasun sought annulment of the limited version of EP(CH) 105, too. Stada submitted further auxiliary requests for both patents in suit with the rejoinder.
The hearing
Three documents were discussed in some detail at the hearing, i.e. DE 100 20 447 A1, Schieke et al. 2002 and Schröder et al. 2004. On the merits, the judge-rapporteur held that Schröder et al. anticipates both patents. However, the parties disagree about the actual publication date of Schröder et al., i.e. whether it is prior art at all.
I did not catch the precise subject-matter of each and every auxiliary request that Stada has submitted in defense of the two patents. But I conclude from the pleadings that the judge-rapporteur had spotted some patentable subject-matter in (at least) lower-ranking auxiliary requests. However, I took from Stada‘s pleadings that certain lower-ranking requests had not been attacked with e.g. Schröder et al. before closure of the file. It appears that Ultrasun has submitted an extensive statement on the judge-rapporteur‘s expert opinion, with >1.2k paragraphs. Stada asserts that Ultrasun is not to be heard anymore with respect to several attacks newly presented only belatedly.
It remains to be seen how the FPC decides under the strict procedural rules of the CPC, without ex officio examination (unlike Art. 114(2) EPC). No settlement discussions took place; the President did not even ask the parties.
The President noted that the FPC is currently very busy. It may well be that a judgment will not be issued before the judicial vacations (15 July – 15 August 2023).
✍ MW
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BIBLIOGRAPHY
Case Nos. O2021_009 / O2021_010 | Hearing of 17 April 2023 | ‘Antioxidants; IR-A’
Ultrasun AG
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Stada
Panel of Judges:
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- Dr. Mark SCHWEIZER
- Dr. Frank SCHAGER
- Dr. Michael KAUFMANN
Judge-rapporteur:
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- Dr. Frank SCHAGER
Court Clerk:
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- Sven BUCHER
Representative(s) of Plaintiff:
Representative(s) of Defendant:
Verhandlung am 17. April 2023, 9:30, in St Gallen i.S. Ultrasun AG gg. STADA Arzneimittel AG re Nichtigkeit von CH EP 2 233 127 und CH EP 1 591 105 B1, https://t.co/KgaRNt0L4E
— Swiss Patent Court (@PatentCourt) March 17, 2023
ANNOUNCEMENT
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PATENTS IN SUIT
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BE ON THE KNOW