Sumi Agro Europe Limited v. Syngenta Limited

Syngenta Limited, the registered proprietor of European Patent EP 2 152 073 ('Herbicide Compositions'), applied for provisional measures against Sumi Agro Limited and Sumi Agro Europe Limited before the Munich Local Division. The patent, filed on 19 May 2008 with priority from GB 0709710 (21 May 2007), was granted on 15 April 2015. Claim 1 of the patent covers an herbicidal composition comprising at least one sulfonylurea herbicide, at least one HPPD-inhibiting herbicide, and at least one saturated or unsaturated fatty acid from 1% to 95% by weight.

The contested embodiment was a herbicide marketed by Sumi Agro under the trade names 'Kagura' or 'Genki', containing mesotrione and nicosulfuron as active ingredients, sold as an oil dispersion for weed control in maize. Syngenta obtained samples of Kagura in the Czech Republic in June 2023 and in Bulgaria on 4 July 2024, and alleged that the product contained fatty acids (palmitic acid, stearic acid, oleic acid, and linoleic acid) in excess of 1% by weight. Sumi Agro refuted this, arguing that the rapeseed oil used as diluent in its UPC-territory product contained only 0.0% to 0.5% free fatty acids and that no additional fatty acid ingredient was included.

Sumi Agro also challenged the validity of the patent based on EP 0 915 652 B1 (EP 652), arguing lack of novelty and inventive step, which Syngenta refuted.

On 27 August 2024, the Munich Local Division ordered provisional measures against Sumi Agro, finding it more likely than not that the 2023 version of Kagura literally infringed claim 1. The Local Division reasoned that as claim 1 is a product claim, it was sufficient for Syngenta to show that fatty acids were present in the required concentration, even if the percentage increased over time due to hydrolysis during the product's 2-year shelf life. The injunction covered multiple UPC Contracting Member States.

Sumi Agro appealed, raising issues including infringement, validity, necessity, urgency, weighing of interests, territorial scope, and security. On infringement, the Court of Appeal found that the contested embodiment more likely than not made literal use of the technical teaching of claim 1, noting that the skilled person would understand that fatty acids in the composition could originate from the oil component. On validity, the Court found that Sumi Agro had not convincingly demonstrated that the patent was more likely invalid than not, particularly regarding the technical effect and the skilled person's assessment of the prior art.

Regarding territorial scope, the Court of Appeal held that there are no transitional rules connected to Art. 34 UPCA, and when a UPC Signatory State ratifies and accedes, the application of Art. 34 UPCA should be automatic from the day of accession. Accordingly, Romania was added to the territorial scope of the injunction.

On necessity, the Court found that a move from a market situation with only one product to one with two competing products could be expected to lead to permanent price erosion, making the provisional injunction necessary. The requirements of urgency and weighing of interests were also met.

Regarding security for enforcement, the Court of Appeal found that Sumi Agro had not substantiated any undue burden in enforcing a UPC compensation order in the UK, noting that both parties are UK registered companies, and that any enforcement would be between UK companies in the UK.

On costs, the Court of Appeal reversed the Local Division's decision, holding that a cost decision should be issued in inter partes proceedings for provisional measures since it concludes the action, and ordered Sumi Agro to bear the reasonable and proportionate legal costs and other expenses incurred by Syngenta both at first instance and on appeal.

The final order: (1) The appeal was rejected except for the cost decision, with Romania added to the territorial scope; (2) The cost decision was reversed, with Sumi Agro ordered to bear Syngenta's costs; (3) All other requests were dismissed.