UPC CFI, CD Paris, 26 December 2024: Patent maintained as amended by auxiliary request

Revocation rejected, maintained as amended by auxiliary request (Article 65 UPCA).

Parties are to submit copies of documents relied on (the patent in dispute, in the version issued by the EPO, and the original application) into the proceedings (Article 76 UPCA). Within the regulatory system of ‘UPC’, each party must prove the facts alleged and the Court cannot, in general, acquire evidence ex officio, nor base its decision on evidence or documents not formally acquired in the proceedings. 

Admissible later filed documents (R. 44 RoP, R. 263 RoP) The documents introduced by the Claimants in the Reply to defence to revocation (Exhibits KAP D06, KAP D16 – D26) and the documents introduced by the Defendant in the Rejoinder to the Reply to defence to revocation (Exhibits BB16 – BB27) are admissible, given that they contain arguments regarding the common general knowledge and the claim interpretation which were advanced in their respective initial written pleadings and are intended to contrast and react to the arguments raised by the opposing party. 

Admissibility of subsequent request to amend the patent (R 30(2) RoP) in deference to the need for expeditious judgments and efficient proceedings, the Court may decide the case even by overturning the priority order of the issues to be decided where a determination can be made on the basis of a more easily resolvable reason - albeit logically subordinate - without examining those that are antecedent. For the reasons that will be explained below, there is no need to examine the auxiliary requests contained in the subsequent request to amend the patent, in addition to those timely filed, since the examination of the latter allows the Court to consider the attacks on the validity of the patent to be overcome and renders such later auxiliary requests devoid of any concrete relevance. 

Inventor not allowed as expert (R. 181(2) RoP). As inventor of the patent at issue he may have a direct interest in the outcome of the case and therefore does not meet the requirements of Rule 181 (1) (a) and (b) ‘Rop’ for impartiality, objectivity and independence. 

Skilled person (Article 56 EPC). Court considers that the person skilled in the art must be identified in a mechanical engineer with either a Bachelor’s degree or a Master's degree in mechanical engineering and several years of experience in the technical field of medical devices and specifically in the field of cochlear implants. 

Common General Knowledge. The ‘CGK’, in general, is information which has been commonly known to the skilled person from written sources or from practical experience in the relevant technical field. The ‘CGK’ includes knowledge which is directly available from familiar sources of information relating to the specific technical field at the prior date but is not to be confused with publicly available knowledge, which may not be general and common. A familiar source of information typically is a source to which a skilled person regularly turns for guidance on standard design solutions that are generally applicable, such as standard textbooks, encyclopaedias, manuals, handbooks, dictionaries and databases which the skilled person knows and can use as a suitable and reliable source for the respective information in the respective technical field. A familiar source of information should not be confused, however, with all publicly available prior art documents.  In any case, the ‘CGK’ is subject of evidence. Pursuant to Article 54 ‘UPCA’, the burden of proving the existence of the ‘CGK’ lies with the party invoking it. Without bearing the burden of proof, the opposing party may present evidence to establish the ‘CGK’, including evidence to the contrary. 

No insufficient disclosure (Article 83 EPC, Article 138(1)(b) EPC). Embodiment construed by the Claimants is not part of the subject-matter of the patent. On that basis, the Claimants objections with regard to insufficiency of disclosure are moot. The skilled person is deemed to possess the relevant ‘CGK’ and use it by reading the patent and implementing the embodiments. Therefore, this teaching should be clear to the skilled person and enable him/her to produce embodiments with a disc-shaped magnet rotatable in the plane of the coil housing parallel to the patient’s skin (and to the magnetic field of the MRI machine). Hence, the patent fulfils the sufficiency requirements under Article 83 EPC. 

Added matter – impermissible generalization (Article 123(2) EPC). There is no indication in para. [0010] or in the application as a whole that indicates that the implantable system could be any other type of implant system as those specifically mentioned, and in the view of the panel this is not directly and unambiguously derivable for the person skilled in the art from the content of the application as filed using common general knowledge. The omission of the exhaustive list of para. [0010] of the application resulted therefore in an impermissible generalization of the claimed invention. Thus, the patent as granted contains added subject matter and does not fulfil the requirements of Art. 123(2) ‘EPC’. 

Inventive step (article 56 EPC). 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 its 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 (see Paris LD, decision issued on 3 July 2024, UPC_CFI_230/2023). In order to assess whether or not a claimed invention is obvious to a person skilled in the art, it is first necessary to determine one or more teachings in the prior art that would have been of interest to a person skilled in the art who, at the priority date of the patent in suit, was seeking to develop an invention or process similar to that disclosed in the prior art. Then, it must be assessed whether it would have been obvious for the skilled person to arrive at the claimed solution of the underlying technical problem on the basis of a realistic disclosure of the selected prior art documents. The problem-solution approach is one possible way for assessment of the inventive step. More detailed teaching of ‘Zimmerling’ is a more suitable starting point for the skilled person.Teaching in ‘Zimmerling’ leads the skilled person to another solution for the above-mentioned problem and, thus, away from the solution in claim 1 of Auxiliary Request 0a. Not obvious in light of ‘CKG’ in combination with ‘Zimmerling’

IPPT20241226, UPC CFI, CD Paris, Advanced Bionics v MED-EL