In relation to the article on our website titled ‘Court grants PI against Spyra for infringement of Amycel patent’, Spyra company and its attorney (‘Spyra team’) made some statements on August 29-30, regarding the dispute with Amycel, protesting to some of its contents and the claims by Amycel.
“In reference to the article published on August 16, 2024, regarding the court dispute over patent infringement between Amycel and Szymon Spyra, we would like to inform that the order issued by the Unified Patent Court (UPC), division based in The Hague, on July 31, 2024, prohibiting the sale of Cayenne mushroom spawn in the Netherlands, Germany, France, and Italy, has been appealed to the court of second instance. The issue of patent infringement has not yet been resolved. The order of the Court in The Hague is only provisional measures, which means it is of a temporary nature and is valid for the duration of the ongoing dispute between the parties over patent rights.”
The Spyra team also stressed the preliminary nature of the UPC decision in a letter to the publisher of Mushroom Business. “We have the impression that Amycel is trying (….) to suggest that this ruling has already determined that Mr. Szymon Spyra committed a patent infringement. At this stage of the case, this cannot yet be determined.” And, on the The Hague ruling: “This is a specific type of simplified and expedited court procedure aimed only at determining whether there is any likelihood of infringement and quickly securing the interests of the patent holder. The purpose of this procedure is to quickly decide only for the duration of the ongoing infringement proceedings, which, as we know, can take several years.”
Amycel – by mouth of John Clay (European sales manager of Amycel) – does not dispute the provisional nature of the UPC decision. The provisional determination has to be confirmed in full merits proceedings. Amycel has filed these full merits proceedings and has high confidence that those proceedings will also result in a finding of infringement and a permanent injunction. If confirmed, the injunction would run until the expiration of the patent in August 2026.
According to Spyra: “The issued judgment does not determine whether the Cayene spawn infringes on Amycel’s patent rights. Additionally, it should be clearly noted that the court has required Amycel LLC to pay a deposit in the amount of EUR 200,000.00 to secure the interests of Mr. Szymon Spyra in the event that the sales ban imposed by the court proves to be unjustified as a result of the resolution of the patent infringement case. The issued order has been appealed by Mr. Szymon Spyra, and the appeal is currently pending.”
According to Amycel, the court was convinced with a sufficient degree of certainty that Amycel’s rights were actually infringed by the offer and distribution of Cayenne, and that it considers it – provisionally – ‘on the balance of probabilities more likely than not that the patent is infringed’, ‘determined by a full panel of highly specialized patent judges’. John Clay on the deposit: “It is correct that the court required a security, which is normal practice in the UPC system, and Amycel did not object to it.”
The Spyra team also stated that, “In a separate proceeding, Mr. Szymon Spyra has taken a legal action to invalidate Amycel’s patent, arguing that his company had been producing and offering for sale brown mushroom spawn (previously under the trade name Sp B1) for many years, which was originally obtained from Hungary in the early 1990s.”
Amycel stated that the UPC has already considered and dismissed this invalidity argument in July because of an apparent lack of concrete evidence to that effect, and is ‘convinced that if Spyra will argue this again in other UPC proceedings, it will be dismissed again.’
According to Spyra, “The following legal proceedings are currently ongoing between Mr. Szymon Spyra and the company Amycel:
- In the District Court in Warsaw concerning patent infringement;
- In the Unified Patent Court in Luxembourg, where an appeal is being considered against the order issued by the Unified Patent Court division in The Hague;
- In the Unified Patent Court division in Milan, where the case regarding the invalidation of Amycel’s patent is taking place; a public oral hearing (revocation action) is scheduled here on November 13th.
- At the Patent Office in Poland, regarding the entry into the patent register the status of a prior user in favor of Mr. Szymon Spyra.
As indicated above, at this stage, none of the ongoing cases has determined whether Mr. Szymon Spyra has infringed the patent. A definitive answer to the question of whether the brown mushroom spawn under the trade name Cayene infringes Amycel’s patent rights to the Heirloom spawn will be known when the aforementioned legal proceedings are conclusively resolved.”
According to Amycel, “The infringement proceedings in Poland (1) were started by Amycel and only concern Spyra’s infringement in Poland. The Polish court can’t determine infringement outside Poland in these proceedings, which is done by the UPC.” Regarding the UPC court in Luxembourg (2) and Milan (3), Amycel is convinced that, if Spyra will continue the proceedings there, Amycel will win these, and the provisional measures of the UPC in The Hague have made clear that the Amycel patent is valid. “The Polish patent office (4) action will have no influence whatsoever on the injunction in the Netherlands, Germany, France, and Italy.”
According to the Spyra team however, there are now three scenarios possible: “Cayenne is a copy of Heirloom, Heirloom is a copy of Cayenne, or despite the high genetic similarity, they are not the same biological organisms.” Spyra stated: “It is important not to overlook in this dispute that Mr. Szymon Spyra’s company has been offering brown mushroom spawn for over 30 years, even before Amycel registered its patent. Therefore, it is not ruled out that Heirloom could be a copy of Cayenne. We will only find this out after the completion of the aforementioned legal proceedings.”
Amycel considers the above – the invalidity argument and the statement that the Heirloom could be a Cayenne copy – highly misleading and incorrect. According to Amycel, UPC provisionally considered and dismissed Spyra’s suggestion that Cayenne was used prior to the Heirloom. Says John Clay: “The invalidity argument was dismissed by the UPC and the Heirloom is the result of Amycel’s substantial investment in R&D. That the Heirloom would be a Cayenne copy will not be determined by, and is not before the courts.”
In summary, and for the moment, the issued order by the UPC in The Hague from July stands and is enforceable, but the order is not yet final and a definitive finding of infringement of the patent has yet to be confirmed in court proceedings.
A hearing on the Spyra appeal at the UPC in The Hague is scheduled for December 5th.
