UPC CFI LD Mannheim, 10 July 2024, exceptional bifurcation - earlier case before Paris Central Division

13-07-2024 Print this page
IPPT20240710, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics

By way of exception: revocation counterclaim and plaintiff’s application for amendment of the patent are referred to the Paris Central Division, because almost all attacks against the patent in suit contained in the nullity counterclaim are also already asserted in the previously filed central nullity action (Article 33(3)(b) UPCA)

 

In principle, the present Board is of the opinion that it is generally appropriate for the local division to also hear and decide on the revocation counterclaim pursuant to Art. 33(3)(a) UPCA. It is thus in agreement with all the orders of other Boards cited by the defendants 2 and 3 in their statement of 24 June 2024 (page 5 et seq.). 


However, the present case has the particularity that almost all attacks against the patent in suit contained in the nullity counterclaim are also already asserted in the previously filed central nullity action. In this particular case constellation, the Board exceptionally exercises the discretion granted to it in such a way that the nullity counterclaim is referred to the central division. The decisive factor for the Chamber is, in particular, the aspect of the efficiency of the proceedings, which, according to point 4 of the preamble to the Rules of Procedure, always carries particular weight when exercising its discretion. In the present case, the aspect of efficiency requires the central division to also decide on the nullity counterclaim, as it is (at least largely) familiar with the subject matter of the nullity counterclaim due to the significantly more advanced central nullity action. By contrast, dealing with the same subject matter in two different panels would be contrary to the principle of procedural economy and would therefore be inefficient. 

 

IPPT20240710, UPC CFI, LD Mannheim, MED-EL v Advanced Bionics