DSM IP Assets B.v v. Algal Omega 3 Ltd

Hearing dates: 1 st–3 rd, 7 th–9 th, 15 th–17 th October 2024

Approved Judgment

This judgment was handed down remotely at 10.30am on 20 March 2025 by circulation to the parties or their representatives by e-mail and by release to the National Archives.

THE HON Mr Justice Mellor

This Judgment is organised as follows:

INTRODUCTION

This is my judgment from the trial of this action concerned with three patents relating to microbial oils and their production. These oils can contain a high level of polyunsaturated fatty acids (“ PUFAs”), such as an omega-3 PUFA called docosa hexaenoic acid (“ DHA”) which traditionally has been sourced from fish oil, and which is an important component of infant formula.

The Claimants (collectively “ DSM”) and the Defendants (collectively “ Mara”) are competing producers of such oils (it being unnecessary for present purposes to distinguish as between the two Claimants and as between the two Defendants).

DSM asserts infringement of three patents (from three different families). In order of priority date, the patents are as follows (there is no challenge to priority).

i) EP 2 921 155 (“ EP155”) entitled “Methods for producing high-quality lipids by enzymatic liberation from biomass” (priority date 3 May 2002). It relates to the use of a protease enzyme in the process to extract microbial oil from Schizochytrium microorganisms. It expired on 4 May 2023;

ii) EP 3 530 740 (“ EP740”) entitled “Thraustochytrids, fatty acid compositions, and methods of making and uses thereof” (filing date 19 March 2009 and no earlier priority date). It provides a new microbial oil, which is a crude oil product derived from a Thraustochytrid microorganism, which has a high triglyceride fraction and a high percentage of DHA in that triglyceride fraction.

iii) EP 2 576 801 (“ EP801”) entitled “Extraction of lipid from cells and products therefrom” (earliest priority date 01 June 2010). It relates to a microbial oil extraction process which solves the emulsion problem without the use of organic solvents.

DSM were keen to emphasise that all three patents have been considered by the EPO Opposition Division (“ OD”):

i) EP155 was maintained as granted by the OD. Opposition proceedings were commenced in 2020 by a strawman entity, and following oral proceedings on 28 September 2022 the opposition was rejected. That decision was not appealed.

ii) EP740 was upheld in amended form by the OD. Opposition proceedings were commenced in 2022 by a strawman entity (another opponent unrelated to the parties to these proceedings initially also opposed EP 740 but withdrew its opposition at an early stage). The First and Second Defendants in these proceedings each filed interventions in March and April 2023 respectively, on the basis of the present proceedings. Following oral proceedings held on 23 November 2023 the OD found claim 1 as granted invalid for added matter, but upheld EP 740 amended in a form corresponding to claim 2 as granted. An appeal to the Technical Boards of Appeal is outstanding, with the appeal hearing date yet to be set.

iii) EP801 was upheld in amended form by the OD. Opposition proceedings were commenced in 2020 by a strawman entity. The First and Second Defendants in these proceedings each filed interventions in March and April 2023 respectively, on the basis of the present proceedings. Following the oral proceedings of 10 and 11 September 2024 the OD found claim 1 as granted invalid for added matter, but upheld EP 801 on the basis of Auxiliary Request 2 (being claim 1, with step c1 (salt addition) and one or more of steps c2 to c4 being required). At the trial the written reasons of the OD were yet to be provided.

Mara counterclaims for invalidity on a variety of grounds. Much