2024-09-16:

20 August 2024, through the procedural order ORD_16663/2024, the Nordic-Baltic Regional Division of the Unified Patent Court (UPC), addresses the defendants’ request to stay the proceedings concerning the validity of the European patent EP 3 769 722, which is also the subject of opposition proceedings before the European Patent Office (EPO).

Headnotes:

    • 1. Article 33(10) UPCA and Rule 295(a) RoP: The Court has the discretion to stay proceedings if a rapid decision from the EPO is expected. Rule 118.2(b) RoP obliges a stay during the oral procedure if there is a high likelihood of the patent being invalidated, but this does not apply during the written UPC procedure.
              2. Article 33(3)(b) UPCA: An application to stay can be dismissed if no bifurcation has been proposed.

Parties:

    • Applicants/Defendants: Meril Life Sciences Pvt Limited, Meril GmbH, SMIS International OÜ, Sormedica UAB, Interlux UAB, VAB-Logistik UAB
    • Respondent/Claimant: Edwards Lifesciences Corporation

Subject-matter: Infringement action

Summary of the Decision: The defendants requested the suspension of the main proceedings pending a decision by the EPO’s Opposition Division on the patent’s validity, or alternatively, pending a decision by the Central Division of the UPC on the counterclaim for revocation of the patent. The claimant opposed this request.

Main Request: The defendants argued that the opposition pending at the EPO would likely result in the invalidation of the patent claims and cited Rule 295(g) and Rule 118.2(b) RoP as the basis for their request. They also mentioned Rule 295(m) RoP in their last submission.

The Court clarified that:

    • Rule 118.2(b) RoP applies only during the oral procedure and not the written procedure. Therefore, it cannot be used to justify a stay during the written procedure.
    • Rule 295(a) RoP and Article 33(10) UPCA govern stays during written procedures if a rapid decision from the EPO is expected. However, in this case, the notice of opposition was filed on 7 March 2024, and a final decision from the EPO, including potential appeals, would likely take 18 – 24 months. Thus, a rapid decision is not anticipated.
    • Rule 295(m) RoP is general and could theoretically apply, but the Court must consider the more specific provisions of Article 33(10) UPCA and Rule 295(a) RoP. The Court must also ensure that proceedings are resolved within a reasonable time, typically within one year.

Auxiliary Request: The defendants also requested a stay based on Article 33(3) UPCA, contingent on the Regional Division referring the revocation counterclaim to the Central Division. However, bifurcation has not been suggested by either party, and the Court has no intention to initiate it. Thus, this request was dismissed.

Conclusion: The Court dismissed the request to stay the proceedings. The defendants may revisit the issue when commenting on the application of Article 33(3) UPCA, as allowed by Rule 37 RoP.

Appeal Information: Leave to appeal is granted, and the order may be appealed within 15 days of service, per Art. 73.2(b)(ii) UPCA and rules 220.2 and 224.1(b) RoP.

The order reflects the Court’s emphasis on ensuring timely proceedings and its careful consideration of the rules governing stays during different procedural stages.

Text: Joakim Wihlsson
Källa: UPC:s hemsida