2024-12-17:

11 December 2024, through the procedural order ORD_65290/2024, the Nordic-Baltic Regional Division of the Unified Patent Court (UPC), ordered not to stay the proceedings concerning an infringement in and the validity of the European patent EP 3 769 722 B1, 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 and counterclaim for revocation

Summary of the Decision: The Court ordered not to stay the UPC proceedings. This is motivated as follows. The Court has scheduled the oral hearing for 16 January 2025 and the EPO Opposition Division has scheduled its oral proceedings for 17 January 2025, i.e. the day after. In the present case, the infringement action was initiated already in October 2023. Rescheduling the oral hearing would push the first-instance proceedings even further outside the one-year conclusion target for the UPC. Since the EPO Opposition Division typically delivers its decision orally at the end of the oral proceedings, it can be expected that the outcome of the opposition proceedings will be available before the UPC issues its decision on the merits, even if the Court proceeds as planned with the oral hearing on 16 January 2025. It is also reasonable to assume that the Opposition Division’s decision will be appealed. Thus, it would take even longer to reach a final decision at the EPO anyway.

The Parallel EPO Case: The grounds for opposition in the EPO case are very similar to the grounds for revocation presented in the UPC case. According to the preliminary opinion of the EPO Opposition Division, which is expressed in the summons to the oral proceedings, the maintenance of the contested patent in its granted form is contested, inter alia with regard one feature of claim 1 arguing that the feature in question represents an unallowable intermediate generalization. In other words, the independent claim of the patent is considered to specify an unsupported limitation. Should the patentee not be able to resolve this issue, the case ends up in the inescapable trap between Articles 123(2) and 123(3) EPC leading to that the patent is revoked.

Conclusion
Perhaps the UPC foresees such an outcome of the EPO proceedings and expects to take an analogous revocation decision. In any case, it is likely that parallel appeal proceedings will be instigated before the UPC and the EPO respectively. We will revert with an updated report as soon as there is something new to report on the matter from the UPC or the EPO.

Text: Joakim Wihlsson

Källor:
The Unified Patent Court
The European Patent Office