Sumi Agro & Anor v Syngenta (UPC_CoA_523/2024)
Decision date:
03 March 2025
Osborne Clarke summary
- Syngenta alleged that Sumi Agro had infringed its patent relating to a herbicidal composition. Sumi Agro argued that its herbicidal product with an alleged fatty acid composition was not actually marketed within the UPC territory. It also challenged the validity of Syngenta's patent. The parties also had opposing views as to the necessity of provisional measures, urgency, weighing of interests, the territorial scope of an injunction, and the need for security.
- At first instance, the Munich LD held that it was more likely than not that Sumi Agro's contested embodiment infringed Syngenta's patent and it was convinced of the novelty of the patent with the sufficient certainty required. Sumi Agro's arguments on lack of inventive step, plausibility and AgrEvo obviousness were rejected. As a result, the Munich LD held that provisional measures were necessary and that the balance of interests was in favour of Syngenta.
- Sumi Agro appealed the Munich LD's decision, requesting that the provisional measures be dismissed. In the Court of Appeal, Sumi Agro contended that the contested embodiment that the Munich LD considered was no longer on the market anywhere. It was therefore necessary for the Court of Appeal to consider potential infringement by Sumi Agro's later embodiment.
- With respect to this later embodiment, the Court of Appeal held that Syngenta had also made out that it was more credible than not that it infringed its patent. The Court of Appeal agreed with the Munich LD's conclusion that Syngenta's patent was novel and that Sumi Agro's arguments did not call into question the inventiveness of the patent.
- As for the application for provisional measures, the Court of Appeal considered necessity. Since it had found that there was a sufficient degree of certainty to conclude Sumi Agro's product infringed Syngenta's patent, the Court of Appeal assessed necessity from the starting point that Syngenta's and Sumi Agro's products were directly competing. Therefore, the market would move from a situation where only one product was available to a situation with two competing products.
- The Court of Appeal held that this would not only cause price pressure but would also lead to permanent price erosion, even if a permanent injunction was later obtained. On this basis, it held that a preliminary injunction was needed. Syngenta was also found to have acted with the requisite level of urgency to justify the preliminary injunction and the weighing of interests was in Syngenta's favour.
Issue
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