Edwards Wins in Landmark Patent Decision at Paris UPC
Written By
Counsel
Germany
I am a counsel in our Munich office and advise on intellectual property matters relating to patents and utility models, in particular in the context of infringement actions before national courts and the Unified Patent Court (UPC).
On July 19, 2024, the Paris Central Division of the UPC issued its first decision, relating to the validity of Edwards Lifesciences’ patent EP 3 646 825, and upheld the patent according to Auxiliary Request II.
Background
The patent concerns a prosthetic heart valve and is at the centre of a long-standing dispute between Edwards and Meril. In total, three entities of the Meril Group brought several validity attacks: a central revocation action initiated by Meril Italy before the Paris Central Division and two counterclaims initiated by Meril Life Sciences Ltd. and Meril GmbH before the Munich Local Division in the infringement proceedings brought by Edwards. The Munich Local Division referred the counterclaims for revocation to the Paris Central Division pursuant to Article 33 (3) (b) UPCA and R. 37 (2) RoP. There, the proceedings were heard in a single oral hearing on June 7, 2024, where a full discussion on novelty and inventive step, amongst other, took place.
The decision
In its decision, the Court largely followed Edwards’ arguments and held that the patent in the amended form was novel and inventive. The Court described its test for determining inventive step, which differs from the EPO’s “Problem-Solution Approach”, but also stated that applying the EPO’s test would not have led to a different conclusion.
The Court also considered several procedural issues and held that the Applications to Amend filed by Edwards were admissible. The Court commented on the number of auxiliary requests and found that the “reasonable” number can depend on the complexity of the case and on the number of invalidity attacks brought against the patent. Due to the lack of a consistent interpretation of the expression “reasonable in number”, the Court suggests a less strict interpretation of this provision.
Conclusion
Overall, the proceedings were conducted in an efficient and timely manner. The positive decision of the Paris Central Division comes just in time for the infringement hearing before the Munich Local Division in September 2024.
The decision is subject to appeal.
The Bird & Bird team representing Edwards Lifesciences includes Boris Kreye, Lead Partner, Elsa Tzschoppe, Counsel, Ioana Hategan, Associate and David Wanner, Associate.