UPC CFI CD Paris, 19 July 2024: Patent maintained as amended by auxiliary request II.

Patent maintained as amended by auxiliary request II. 

Connection joinder and competence of the Central Division (Rule 340 RoP, Article 33 UPCA). Coordination of revocation action and counterclaims for revocation through consolidation through consolidation before the local division is not possible. The competence of the Central Division cannot be derogated by virtue of the joinder of the proceedings. Interpreting Rule 340 ‘RoP’ to require a joint hearing for the revocation proceedings before a panel comprising all judges from both the central and local divisions […] lacks a legal basis in the ‘UPCA’ and the ‘RoP’, nor is it supported by EU law principles. 

Admissibility of application to amend the patent (Rule 30 RoP, Rule 50 RoP). If an application to amend the patent is found to be inadmissible, any subsequent request to amend the patent must also be considered inadmissible. This is because a subsequent request inherently presupposes that a previous request was validly submitted. While a complete lack of explanation in an amendment request can render it inadmissible, an insufficient explanation does not necessarily have the same effect. In the latter case, the application may be unsubstantiated but not inadmissible. This unsubstantiated nature would not prevent the defendant from filing a subsequent, compliant request to amend the patent under Rule 30(2) ‘RoP’. The number of the amendments originally filed [9 conditional amendments and 84 auxiliary requests] considered to be extremely high, potentially hindering the efficiency of the ‘UPC’ proceedings and the goal of delivering expeditious decisions, it does not appear that that number is ‘unreasonable’. 

Claim interpretation (Article 69 EPC). Person skilled in the art […] may be identified as a group consisting of a medical device engineer with an interest in prosthetic heart valves and an interventional cardiologist. 

Main Request invalid because of undue extension of divisional application – added matter (Article 76 EPC, Article 123(2) EPC). Intermediate generalisation as a consequence of the isolation of a non-optional feature. 

Auxiliary request II - priority right not validly claimed (Article 87 EPC, Article 4 Paris Convention). Rebuttable presumption of the entitlement to priority in favour of the subsequent applicant, provided the latter can demonstrate the acquisition of the right to the title. Later application does not cover the "same invention". 

Novelty (Article 54 EPC). The wording of ‘Levi’'s claims and description does not disclose this feature [1.5]. Additionally, contrary to the claimant's argument, the drawings are not conclusive. Novel in view of ‘Benichou’: claims and description do not disclose a frame made entirely of hexagonal cells, nor do they mention the types of struts which form the cells. […]. Additionally, the figures lack a clear depiction of side struts. Novel in view of ‘Dimatteo’:  person skilled in the art would understand that 'Dimatteo' discloses […] a venous valve rather than a heart valve. Novel in view of ‘Harition’: does not disclose either that the frame comprises hexagonal cells or that it is made up entirely of hexagonal cells.  […] It is clear from this figure [27] that feature (1.5) cannot be derived directly and unambiguously from ‘Hariton’. 

Inventive step. Technical effect Auxiliairy request II (Article 56 EPC): Burden of proof: The party asserting the invalidity of the patent must prove the relevant constituent facts in order to rebut the presumption of validity accorded to the granted patent. It is necessary to determine whether, given the state of the art, a person skilled in the art would have arrived at the technical solution claimed by the patent using their technical knowledge and carrying out simple operations. Inventive step is assessed in terms of the specific problem encountered by the person skilled in the art. Problem-solution-approach does not appear to mandatory. Regardless, applying the “problem-solution approach” to the present proceedings would not lead to a different conclusion.

IPPT20240719, UPC CFI, CD Paris, Meril Italy v Edwards Lifesciences