21 februar 2023

Last year in Norwegian patent law - 2022

Every year, we look back at the past year and provide an overview of interesting developments in the different areas of intellectual property law (copyright, patents, designs, trademarks and unfair competition). In this post, Yngve Øyehaug Opsvik provides an overview of the developments in Norwegian patent law over the past year. This is a translation of the original Norwegian article, for any international practitioners interested in Norwegian patent law.

The sun rises over a new year in patent law, painting by Theodor Kittelsen
The year of 2022 was a particularly good year to be charged with writing the overview of patent law developments. There were several exciting cases decided by the courts last year, including two important procedural decisions that may have great impact on the way patent cases are prepared and performed. There are no significant changes in legislation. Some new provisions in the Norwegian Patent Regulation concerning the Nagoya Protocol have been included, which one should be attentive towards should you file a patent application in Norway that uses genetic material or traditional knowledge. 

Internationally, there’s a lot of excitement related to the enforcement of the Unified Patent Court, that according to plan is supposed to handle cases from June 2023. Of course, Norway is not a party to the UPC agreement, and cases concerning Norway may not be brought before the UPC. It remains to be seen how many plaintiffs will choose this path, how the court will operate, and whether Norwgian courts will be interested in its practice and decisions. The many heads of this Troll are keeping a close eye on the developments.

 Neurim: Refusal of appeal - Supreme Court Decision

In my opinion, the Borgarting Court of Appeal’s decision concerning the refusal to appeal in a case concerning a patent application for the pharmaceutical company Neurim is one of the most important decisions this year. The Supreme Court dismissed the appeal in a thorough interlocutory decision, HR-2022-634-U

The case concerned the validity of a decision from the Norwegian Board of Appeal for Industrial Property Rights (BAIR) refusing a patent application for a melatonin-based drug product. Oslo District Court concluded that the patent was invalid due to the lack of inventive step over a study that encompassed patients with the relevant diagnosis, primary insomnia. IP-trollet has previously discussed the case here

After the District Court's decision was appealed to Borgarting, the Court of Appeal on its own initiative sent a notification that the court considered to refuse the appeal concerning the validity question, under reference to Section 29-13 (2) of the Norwegian Dispute Act. The Court of Appeal then refused the appeal stating that it “clearly would not succeed”. The refusal was appealed to the Supreme Court. Neurim claimed that the threshold for refusing appeals should be high, and that it was not clear that the appeal would not succeed. In this regard, Neurim referred to the fact that EPO had accepted the patent, with knowledge of the prior art that lead to the District Court’s invalidity order. Reference was also made to the fact that the assessment of inventive step depends on expert discretionary considerations, and that it was not justifiable to assess the appeal without appointing expert lay judges. 

The Supreme Court concluded that the refusal to appeal was sufficiently justified, and that the threshold set for the refusal was not too low. The court emphasized “the district court’s clear judgment and the documentation that was available to the court of appeal”. At the same time, the court stated that even
though an appeal of a judgment in a patent case may be refused, in practice it will often not be justifiable. IP-trollet has previously discussed this decision here.

The interlocutory judgment was concluded under dissent from Judge Falch, who strongly argued for the need for expert lay judges when assessing patent validity. In my opinion, most patent cases are sufficiently complex that it is difficult to imagine a situation where it is justifiable to refuse an appeal. A difference in interpretation ofthe cited prior art may have great impact on the validity question. The cases often concern questions that are so complex that the risk of the court being mistaken in their assessment of the facts in the first instance is greater than what is normally the case in civil disputes.

Of course, it may be that this particular case was so obvious that the refusal to appeal was justifiable, but the fact that the EPO assessed the patent differently speaks strongly against it. The decision does in any case lead to an unfortunate insecurity for the parties in patent disputes. We have already seen that respondents are using space and time to argue that appeals in patent disputes shall not be allowed. Hopefully, this decision is a rare exception to the main rule being that there is normally no basis for refusing an appeal in patent cases concerning validity. It is important that this does not become common practice, so that both the patentee and the alleged infringer may receive a real two-instance assessment and certainty that cases that may involve very large values receive a correct and thorough review.

Two interlocutory judgments on cutting off expert reports 
In patent and other IP cases, reports written by expert witnesses engaged by a party are often a central element in the case preparations. In 2022, two decisions were delivered concerning such reports made by patent attorneys. The rulings highlight the borderline between an expert report that may be submitted under the provisions on free submission on evidence, pursuant to Section 21-1 of the Norwegian Dispute Act, and a statement on the law that requires consent from the opponent, pursuant to Section 11-3 of said Act. 

The first decision (LB-2022-94470) concerned a patent case between Welltec* and Altus (see below). Altus had submitted a report from a patent engineer that Welltec claimed to be a statement on law. The District Court disagreed with this and ruled that the report should be submitted as evidence in the case. In the District Court’s ruling, it was stated that the report conformed with what is usual in patent cases, and that the “patent-technical” assessments would necessarily overlap with the legal assessments. 

The Court of Appeal disagreed, and stated that it was insignificant that the person writing the report was not a lawyer. The determining factor was whether the report essentially assessed the legal questions in the case. The Court of Appeal emphasized that the report’s structure and content focused on the legal questions in the case. The report concerned legal assessments of the central questions in the case. It did not contain direct general legal interpretations or evidence for “legal principles”. However, since the report was characterized by concrete legal assessments, it was to be cut off. The patent attorney’s testimony was however not cut off. This was of course permitted insofar the witness was to testify on factual matters. It was up to the court to assess to which degree the witness was permitted to express itself on legal questions, cf. Section 11-3 (3) and (4) of the Norwegian Dispute Act.

The decision was shortly after followed by another decision from the Oslo District Court (22-016386TVI-TOSL/05). Here, too, the topic was submission of two expert reports written by a patent attorney, this time in a case concerning the BAIR’s decision on invalidity. The District Court highlighted specific quotes where the report discussed the BAIR’s legal assessment and concluded on the legal questions. On this basis, the reports were considered, at least partly, as statements on the law, that could not be submitted without the consent of the opponent (and the court). 

The decisions indicate a clear direction change from the courts, since expert reports containing legal assessments have been used for years, mainly without reactions from the parties or the court. For those working with patent litigation, this will impact which expert witnesses are being used and how the reports are being formed. The parties are of course still able to argue its views in written form for the legal sides of the case, but this must, going forward, be within the provisions of the Dispute Act and mainly in the form of pleadings, with the limitations this entails.

LB-2021-41432 Vetco 
The Court of Appeal has processed a case between Subsea Solutions AS and Subsea Smart Solutions on one side, and Vetco Gray Scandinavia AS on the other, concerning the validity and infringement of Subsea Smart Solutions’ patent for a method and device for supplying liquid to underwater wells for use in e.g. oil production. Such liquid supply is relevant for scale treatment, or to shut down a well, in a so-called well-kill operation. The Court of Appeal concluded that the patent was valid. The central prior art in the case solved other problems and had so many different features compared to the patent that it was not a good starting point for arriving at the patented solution. The modifications that had to be made went beyond what an average person skilled in the art, who does not have any inventive skills, was capable of. 

Contrary to the District Court, the Court of Appeal concluded that no direct infringement of the patent was made by Vetco Gray’s offering of a specific solution. The conclusion of the District Court was based on a misunderstanding of the offered solution. The infringement argumentation of Subsea Smart Solution was based on a hypothetical, possible solution that was neither offered nor requested. The Court of Appeal also assessed infringement based on the doctrine of equivalents for the offering, but concluded that there was no infringement based on this doctrine either. Vetco Gray’s solution lacked the essential feature, a valve, and therefore did not solve the same problem and did not constitute a close modification. Finally, indirect infringement was assessed. However, no evidence was presented showing that the customer would use the delivered solution in a way that involved an infringement. The question of subjective or objective assessment of the intention was therefore not relevant for this case. Read about the District Court’s decision here. 

LB-2020-74565 Biomar 
The first concerned a case between STIM and Biomar, concerning Marical and STIM’s patents for a method of smoltification, i.e. the biological process that enables fish, such as salmon, which begin life in fresh water, to survive in salt water. The patents respectively concerned a method which involved adding specific substances to the water, together with the use of a specific feed. The product patent concerned a feed that promotes smoltification. Biomar sold a smoltification feed that had ingredients covered by claims in the product patent. The formulation of the feed had changed during the period in which the alleged infringement should have taken place. For the method patent, the question was whether Biomar had performed an indirect patent infringement, cf. Section 3 (2) of the Patent Act, by selling the feed to breeders who could conceivably add a substance covered by the method claim to the fish water, not to induce the smoltification, but for another purpose (regulation of the water’s acidity). Biomar attacked the validity of the patents, and the Court of Appeal therefore started the decision by assessing this question. 

The Court of Appeal upheld the patents as valid over previous cited prior art that either did not describe the mechanism of action for the additives or did not clearly describe the ingredients that the feed should have. Testing of the feed before patenting was not considered prior public use because it was done at companies that had a customer relationship with STIM, and must have considered themselves bound to secrecy. The parties agreed that there was an infringement of the product patent for the period where Biomar sold the feed with tryptophan. The intriguing question in the judgement is the question of indirect patent infringement. The District Court had interpreted the requirements so that the determining factor was whether the customer in question subjectively intended to utilize the patent’s method. The Court of Appeal determined that this is wrong. The question is whether the use that the customer is expected to make of the product, will objectively entail patent infringement, regardless of whether the intention is to exploit the invention. This resulted in Biomar performing an indirect patent infringement. The Court of Appeal explicitly stated that if Biomar had taken control measures and informed the customers on uses that would not be permitted, the outcome may have been different. In my opinion, the court of appeal’s decision is correct and solid. The District Court’s judgment opened the way for circumvention of the Patent Act and challenging questions of evidence. It is conceivable that the Court of Appeal's assessments here may also impact other matters, for example questions about interference with pharmaceutical patents in the case of product reviews that omit protected indications (carve-outs or skinny labelling). 

TOSL-2021-46454 Ewos 
The District Court also considered another case concerning the fish feed; Ewos’ legal proceedings against STIM, with a demand for judgment that the company did not perform infringement in STIM’s patents. The case partly concerned the same method patent as in the Biomar case described above, and partly a patent based on a divisional application from the product patent that was invoked in the case. 

In the assessment of the method patent, the court concluded that the circumstances were parallel with the case against Biomar, and consequently that the sale of the feed constituted an indirectpatent infringement, at least for some circumstances. However, the District Court seems to have fundamentally misunderstood the Court of Appeal’s reasons in the Biomar case. The Court of Appeal’s assessment of the indirect patent infringement is based on a purely objective assessment of the use of the remedy by the buyer will entail patent infringement. Because the subjective intention to exploit the patent’s method is irrelevant, the Court of Appeal came to a different conclusion than the District Court. However, in the case of Ewos’ infringement, the District Court stated that the Court of Appeal concluded that some of the customers had a subjective intention to exploit the patent. It is difficult to understand why the court reads the Court of Appeal’s judgment in this way. In any case, this must be regarded as an unfortunate lapse, which does not affect the instructiveness of the Court of Appeal’s, in my opinion, correct interpretation of the topic of assessment. 

Ewos claimed to be acquitted of infringement because the sale of the feed only amounted to exploitation of known prior art. Under English law, such an argument is called the "Gilette defence". The court concludes that an acquittal on this basis would entail a preliminary invalidation of the patent, contrary to Section 61 of the Patent Act. This is not so clear to me. In any case, it is probably true that the argument has little merit in connection with a method patent such as this. 

The court ruled that Ewos did not infringe the product patent, also in line with a decision from the Court of Appeal on the interpretation of the patent. The judgment includes an interesting assessment of whether the court can omit to assess an invalidity claim in a case where the conclusion is that there is no infringement. After a closer review of the system in the Disputes Act, the court concludes that there is no requirement for it, even though the question of infringement and the question of validity are in principle independent of each other, and a claim for invalidity therefore cannot be raised alternatively. In terms of the court’s resources and effecivness, this is perhaps a good solution. However, given how much of the preparation time and the main hearing is normally devoted to questions of validity, the courts should be careful not to allow such a procedure to have an impact on the distribution of legal costs. 

IP-trollet has previously discussed the case in more depth here

The judgment is appealed. 

TOSL-2021-145864 MSD 
In this case before the Oslo District Court, MSD had been granted a patent concerning the active ingredient sitagliptin for treatement of diabetes 2. Later on, MSD requested to limit the patent by making amendments to dependent claims so that they were limited to combinations with the known active ingredient metformin. However, the independent claims were not to be limited, so that they would still encompass sitagliptin, regardless of combination with other active ingredients. The Norwegian Intellectual Property Office (NIPO) rejected the request because the independent claim would still have the same scope of protection, so that no limitation actually occurred. The BAIR maintained the NIPO’s decision, but with a different reasoning. From the EPO’s patent guidelines, it follows that a limitation in a dependent claim may in principle result in a patent limitation. Nonetheless, the BAIR stated that the patent protection would be expanded as a result of the change, as a combination would then be encompassed by the patent claim. This must be a misinterpretation of the independent claims, as a general protection that includes sitagliptin will also necessarily include sitagliptin in combination with other preparations. 

In any case, the BAIR’s decision was brought before the Oslo District Court. The court, not surprisingly, concluded that the BAIR’s conclusion was based on a logical fallacy. However, the court points out that the amendment would strengthen MSD’s protection, because an explicit indication of the combination in the patent claims will give rights to extended protection through a supplementary protection certificate. This is probably MSD’s motivation for applying for an amendment of a dependent claim in a situation where there is no prior art which necessitates an actual limitation of the protection. The court found the decision invalid and stated that whether the “restriction” is legal must depend on whether it is supported by the basic documents and the patent that was granted. The court may be going too far here. The patent holder has the right to limit the patent. Whether the patent is limited is not only an assessment of whether the scope of protection is extended by the limitation, but also of whether the limitation actually leads to a reduction of the protection. When the BAIR re-assessed the complaint after the District Court’s judgment, this is how they concluded; the conditions for support in the basic documents were met, but the limitation in the dependent claims did not entail a reduction of the scope of protection, and the complaint was rejected (KFIR-2020-139-B). MSD has again issued a writ of summons, and is thus set for another round in the Oslo District Court. 

TOSL-2021-110399 Intervet 
Intervet, a Dutch veterinary pharmaceutical company, brought the BAIR’s decision invalidating their patent application for a solution for automatic salmon lice monitoring to the district court. The Patent had been declared invalid due to the lack of novelty and inventive step following an objection from a competitor. Intervet’s proposal for amendments of the claims were rejected because they would involve illegal changes. 

The District Court agreed that the patent lacked inventive step. The assessment of the question of whether the auxiliary claim sets constituted an illegal change pursuant to Section 13 of the Patent Act (and therefore could not limit the patent so that it retained its validity) is the most interesting part of the judgment. The court concluded that a change that entailed that the angle in which the camera that was supposed to count salmon lice was oriented, and which was indicated by a figure, was not clear and unambiguous because the basic documents did not say anything about the angle being important. Thus, it was not clear that this was part of the invention. A second auxiliary claim set which limited the patent to an embodiment where the fish was forced to swim along a track was considered an intermediate generalization, because the patent’s description only indicated a specific form of track, namely an “endless circular track”. A limitation that also contained this feature was considered permissible. The BAIR’s decision was therefore invalid as far as this set of claims was concerned, and the case was sent back to the BAIR for a new assessment on this basis. This limitation meant that some of the figures the claim referred to conflicted with the content of the claim. The court considered that the contradiction between the wording of the claim and the relevant figures was so clear that the expert would have no problem understanding the extent of the claim. 

The assessment of the question of unlawful changes is closely aligned with European practice and may perhaps indicate that Norwegian courts are in the process of abandoning the more lenient, Norwegian style of interpretation on which many previous decisions are based. 

TOSL-2021-72669 Rottefella 
The case concerned several patents owned by Rottefella and Madshus for ski bindings that allowed for adjustments without needing to take the ski off, e.g. when using skin skis, where the optimal placement of the bindings may vary depending on where one skis. The competitor Amer had launched bindings with the same feature, and Rottefella and Madshus sued for infringement. Amer filed a counterclaim claiming infringement in two patents for locking mechanisms for ski bindings. The case also raised trademark questions, which I will not comment on here. The patent claims were detailed, and the court of appeal interpreted the patent so that it had a rather narrow scope of protection. 

In this case, it is of particular interest how the court assesses which cited prior art the relevant person skilled in the art would look to. The court states that prior art related to alpine sport will be relevant for the patents concerning how to attach the binding to the ski. For the patents that concerned the adjustments of the bindings, prior art from the alpine sport were of less interest. In alpine skiing, there is no reason to move the center of gravity when the skis are used, as there can be during cross-country skiing according to the patents. This practical approach to the field is an example to follow. When assessing the validity of Madshus’ patents, it is decisive that solutions for alpine equipment are not relevant for the bindings for cross-country skiing. 

In the specific assessment of the patents, that were invoked by Amer and Salomon, it is of particularinterest that the court assumes that Rottefella does not perform infringement following a “Gilette defence”, in other words an allegation that the patent cannot be interpreted to include the allegedly infringing solution, because it would then encompass prior art. Rottefella’s solutions were known at the time of application, and the patents could therefore not validly be interpreted in such a way that Rottefella’s solutions interfere with them. 

Further, the decision contains a thorough assessment of Amer’s liability and the scope of the damages. As a consequence of Amer’s patent infringement, the court awarded Rottefella damages close to MNOK 26. The largest loss, future loss, resulted in MNOK 25 and includes the loss that Rottefella suffered due to decreasing the price on the bindings after Amer launched the infringing product. Madshus was awarded NOK 200 000 in license fees. Amer was also instructed to withdraw the bindings from the market. 

The judgment is appealed. 

 TOSL-2020-164626 and LB-2022-93003 Silva Green 
The case concerned questions of infringement and the validity of a patent for extracting bio-oil from “lignin materials”, which can be a waste product from ethanol and paper production, among other things. The infringement action was brought by LTL, which had an exclusive license to exploit the patent, against Silva Green. 

The bio-oil covered by the patent can be used as fuel. The invention was based on the use of formic acid under certain pressure and temperature conditions. After a concrete assessment, the court concluded that the patent was valid, despite several objections from Silva Green, including claims that there was an intermediate generalization, lack of novelty and inventive step. None of the cited prior arts described all features of the invention, when the court’s interpretation meant that "lignin material" was something other than ordinary wood. 

A consequence of this interpretation was that there was no direct infringement of the patent. Silva Green used unprocessed biomass, such as wood chips, in its process, and this was not covered by the court’s narrower interpretation of the term. The process did not use significant amounts of formic acid either. Formic acid could be formed during the process, but only as an incidental effect of the water used, and in small amounts. The court also assessed infringement based on the doctrine of equivalents. Like the other claims, this one could not succeed without the patent being interpreted so broadly that it would encompass prior art. The court considered the case in such a way that Silva Green’s method solved a different problem than the invention, because the source material was different. 

The case itself was solved through a concrete assessment. The interesting part of the judgment is the decision on legal costs. Based on a discretional assessment of the time management of the specific parts of the case, the District Court awarded 60 % of the legal costs to the patentee Vestlandet Innovasjonsselskap (VIS), who had won the part on validity, and 40 % to Silva Green, who had been acquitted for the alleged infringement. Silva Green appealed the decision on legal costs to Borgarting Court of Appeal, who decided this question in the case LB-2022-93003. The appeal was based on Silva Green’s claim that they in reality had won the case, since the question on invalidity was only brought as a consequence of the question on infringement. The reason for it being an independent claim was the special provision in Section 61 of the Patent Act, that prevents the court from prejudicially basing their decision on that a patent is invalid, without deciding on the patent’s validity first. 

The Court of Appeal concluded that the licensee LTL, who was the plaintiff in the infringement action, and VIS, who was the defendant in the validity action, was not to be considered “the same party”. Consequently, VIS was to be regarded as winning the validity action against Silva Green, cf. Section 20-2 (1) and (3) of the Dispute Act. Nonetheless, the Court of Appeal did find that there were weighty reasons to partly acquit Silva Green for the liability towards VIS, cf. Section 20-2 (3). The court referred to Section 61 of the Patent Act that made it necessary for Silva Green to include VIS in the case, and it would thus be unreasonable if LTL/VIS obtained a better outcome than what they would have done if VIS had not given LTL an exclusive license. For this reason, the Court of Appeal limited Silva Green’s legal costs towards VIS for an equivalent amount to what Silva Green was awarded in the infringement action. 

TOSL-2022-21432 Aziwell 
Devico AS had brought legal action against a previous employee and his employer for the transfer of a patent. The companies supplied equipment for core drilling, which in short are drills that drill into the seabed or ground and at the same time collects samples of the soil. The previous employee and the company Aziwell had previously been ordered to pay damages of MNOK 5 for unlawful exploitation of trade secrets. The alleged invention in the case concerned a valve solution which, according to Devico, had been developed by one of their employees, who had then transferred the rights to the invention to Devico pursuant to an agreement. However, Aziwell claimed that the invention was made by their former employees and that it differed from Devico’s solution. Aziwell also claimed that Devico’s solution had been made available to the public before the patent application. The court took a shortcut and stated that since it was proven that Devico’s valve solution had been publicly available, rights to this could not justify any rights to a patent. The judgment does not consider whether the patent describes something different and more than Devico’s solution, and thus avoids making a prejudicial decision on the validity of this. Nonetheless, based on what appears in the judgment, it is reasonable to think that the granted patent may have gotten a new and troublesome prior art to deal with if it is later challenged. 

The judgment is appealed. 

TOSL-2021-137625 Welltec* 
The District Court assessed a dispute between Welltec and Altus, both suppliers of solutions for well intervention in oil and gas wells. The case concerned Welltec’s patent for a drilling solution to expand the diameter of a pipe. Welltec claimed that Altus’ tool, which had a similar design to the tool described in Welltec’s patent, constituted an infringement. Altus claimed that the additional features of their tool distinguished it from Welltec’s tool, and in any case that Welltec’s patent was an anticipation from a photo of another tool published before the patent’s priority date. The parties disagreed about what technical information could be derived from the photo. The court agreed with Altus’ interpretation of the photo, and concluded that Welltec’s patent lacked the inventive step in light of this photo in combination with the general knowledge of the subject. The judgment also contains an obiter dictum about unlawful amendments. The judgment is appealed. 

TOSL-2021-172164 Entromission
This case concerns the classic issue of patenting a perpetual motion machine. Entromission AS had applied for a patent for a method to “extract mechanical energy from thermal energy”. The patent application contained no examples of the use of the alleged method, but a long and complicated example of calculation which was supposed to show that under certain conditions it was possible to extract mechanical energy from thermal energy. The NIPO had “after extensive guidance” rejected the application because the alleged invention lacked technical effect, technical character and was not reproducible. The BAIR confirmed the NIPO’s decision. The District Court also concluded that the NIPO’s decision was valid. Although the example of calculation did not contradict thermodynamic laws, it was based on ideal assumptions. Since no industrial application of the principle had been shown, there was in any case no question of a patentable invention. 

Thanks to Martha Krogli Brygfjeld and Tora Rieber-Mohn for the help with this article! 
*Yngve Øyehaug Opsvik represented Welltec in this case.

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