Edwards Lifesciences v Meril (UPC_CFI_380/2023)
Decision date:
10 December 2024
Osborne Clarke summary
- This order arose following an interim conference between the parties.
- The Nordic-Baltic RD decided not to reschedule the UPC oral hearing, despite the hearing of accelerated EPO opposition proceedings being scheduled for the day after the UPC hearing. The court noted that it was likely that it would have the outcome of the EPO opposition proceedings before it issued its decision on the merits as the EPO Opposition Division usually delivers its decision orally. In any event, the decision would likely be subject to an appeal. Against this background, the court declined to reschedule its hearing and requested that the parties update it on the outcome of EPO proceedings.
- Meril's inclusion of additional prior art, introduced as a starting point (the closest prior art) for an attack on inventive step in its counterclaim, was held to be inadmissible. The Nordic-Baltic RD agreed with the Paris CD that grounds for revocation that could have been included in the initial statement of revocation are inadmissible. However, excluding arguments and evidence did not mean that Meril could not use those to prove the alleged scope of the common general knowledge (CGK) as part of the inventive step attack to help prove specific statements made in the counterclaim. As such, Meril was allowed to rely on additional documents to support its CGK-based arguments. Meril requested the allocation of a court expert but the court was not convinced that there was a need for one. Meril also requested that its expert (who had submitted a written expert opinion) be summoned to be heard at the oral hearing and that the parties be allowed to cross-examine/question him. The court held that, according to Article 53 UPCA, the questioning of experts is limited to what is necessary. Meril did not submit an application to the courts under Rule 176 RoP seeking to offer oral witness evidence and setting out more details about it, instead making the offer in different statements submitted to the court. In light of this, the court concluded that it could not see that there would be additional value to hearing Meril's expert in person.
Issue
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