Full victory for Rimfrost against Aker BioMarine

Søre Sunnmøre District Court found for Rimfrost after Aker BioMarine had sued the company for rights to krill processing patents and patent applications.

This is evident from Søre Sunnmøre's ruling of 4 January 2019.

Aker BioMarine filed the action against Rimfrost in September 2017. The background was that Aker BioMarine had acquired the krill trawler Juvel from the estate of Emerald Fisheries. Any patent rights related to the machinery on board were to be included.

The key issue of the matter was thus whether a group of patents and patent applications, which relate to methods for removing the shell from krill to, by that means, reduce the fluoride content, belonged to Emerald Fisheries or Rimfost at the time when the first-mentioned went into bankruptcy.

Rimfrost pointed out that the company purchased the disputed patents from Emerald Fisheries in 2012. Aker BioMarine argued that the sales agreement was pro forma and invalid, but the court did not uphold the claim. Søre Sunnmøre District Court assumes that Rimfrost purchased the patents, and that the sales agreement is valid and genuine.

Aker BioMarine alternatively submitted that Emerald Fisheries had repurchased the patents before the bankruptcy, but the court did not uphold this claim either.

Aker BioMarine also submitted two alternative claims.

Firstly, Aker BioMarine claimed right of use to the disputed patents, in the event that the company was not deemed to be the owner. Aker BioMarine claimed to have taken over the right of use that Emerald Fisheries had been promised after the patents were sold to Rimfrost in 2012. The court did not uphold this claim either. Søre Sunnmøre District Court assumes that Emerald Fisheries' right of use was non-transferable, among other things with reference to the presumption principle of the Patent Act section 43. According to the District Court, the provision should be understood to mean that patent licenses are non-transferable, unless separate evidence exists that indicates that something else has been agreed. Such evidence did not exist in this matter. On the contrary, there were several facts that pointed in the opposite direction, among others that the licence was perpetual and free of charge.

Aker BioMarine also submitted to have a right to exploit the patents on board the krill trawler Juvel pursuant to the exhaustion doctrine of the Patent Act section 3(3)(2). This claim was not upheld by the court either. Søre Sunnmøre District Court points out, among other things, that the exhaustion doctrine applies to "patent-protected products", and not to patent-protected methods. Furthermore, it is pointed out that such an extension of the provision's scope of application would have untenable consequences and directly inhibit innovation and competition in the market. According to the District Court, Aker BioMarine's arguments had neither evidence in fact nor in law.

Secondly, Aker BioMarine alternatively submitted a claim for damages that the company claimed to have acquired from Nordea and Innovation Norway. The alleged tortious action was that, in 2012, Emerald Fisheries sold the patents to Rimfrost without meeting a consent requirement in a loan agreement. Nor this claim was upheld by the court. Søre Sunnmøre assumes that a breach of contract has not taken place, among other things because the required consent had been collected. In any case, no financial loss had been suffered.

Thus, Rimfrost was successful on all counts and was awarded costs.

Wierholm's team consisted of Ronny Lund, Dina Brask, Siv Snipsøyr and Rune Opdahl.

Closing date for appeals is 4 February 2019.

Søre Sunnmøre District Court heard the matter after the Supreme Court (by five justices) determined that the Patent Act's provisions on compulsory venue did not apply.