Edwards v Meril (UPC_CFI_15/2023)
Decision date:
15 November 2024
Osborne Clarke summary
- This decision concerned Meril's alleged infringement of Edwards' patent relating to a prosthetic heart valve. Separate validity proceedings were issued by Meril in the Paris CD and separate revocation counterclaims were initiated in the Munich LD. These revocation claims/counterclaims were consolidated by the Paris CD, which rejected the revocation action and maintained the patent in amended form. The decision was appealed.
- Here the Munich LD found that Meril's attacked embodiment made "direct and literal use of the patent, as upheld by the [Paris CD]". Accordingly, the court ordered an injunction against Meril. Meril argued against the territorial scope of the injunction, pointing to a disclaimer on its website noting that the infringing product was not available for sale in Germany. The Munich LD reminded Meril that under Article 34 UPCA injunctive relief (and other corrective measures) can be ordered with respect to all contracting member states in which the European Patent has effect and for which the decision has been requested, as long as an infringing act or the risk of infringement has been proved for at least one UPC member state.
- Meril argued that it had a proportionality defence to the infringement: namely, that the interests of third parties (patients with severe heart disease) and the public necessitated denial of full injunctive relief, recall and destruction of its products. In considering the interests of third parties and the public interest, the court will have regard to the possibility of the infringer entering into a licensing agreement or initiating proceedings for a mandatory licence. Meril's request for a mandatory licence in Germany had been rejected, with it being held to be an unwilling licensee – an assumption it was not able to dispel in these proceedings.
- Even though Meril was considered to be an unwilling licensee, the court still considered the interests of third parties and the public because they have no ability to influence a defendant's behaviour. Here, the court concluded that there was a need for Meril's XL-sized valve prosthesis. As such, the order for recall and destruction was limited so that it did not extend to XL devices scheduled for implantation in individual patients before a specified date.
- Meril had also made a preliminary objection that the court lacked jurisdiction over claims relating to periods prior to the UPCA coming into force on 1 June 2023. The Munich LD rejected this on the grounds that if, at the end of the transition period when the UPC has exclusive jurisdiction over all European patents, if it did not have jurisdiction over these claims, then no court would (even taking into account the statute of limitations, which it noted only applies if the defendant raises it in a timely manner).
Issue
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