Labrador Diagnostics v bioMérieux (UPC_CFI_315/2024 & UPC_CFI_571/2024)
Decision date:
23 April 2025
Osborne Clarke summary
- Under Article 33(3) UPCA, if a counterclaim for revocation has been brought in an infringement action, the LD or RD concerned has discretion (after hearing the parties) to either: i) proceed with the infringement action and the revocation counterclaim; ii) refer the counterclaim for revocation to the CD and stay or proceed with the infringement action; or iii) with the agreement of the parties, refer the case to the CD.
- In this case, the Düsseldorf LD exercised its discretion to refer the counterclaim for revocation to the Milan CD, where a revocation action was already pending. The referral to the CD was requested by Labrador and was not objected to by bioMérieux and the other defendants. As a result, it was treated as a unanimous request and transfer was deemed appropriated for reasons of efficiency.
- The Düsseldorf LD decided to proceed with the infringement action pursuant to Article 33(3)(b) UPCA and Rule 37.4 RoP.
- The panel for the LD may stay the infringement proceedings pending a final decision in the revocation proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings. The Düsseldorf LD decided that a stay would not be appropriate as a detailed examination of the likelihood of invalidity requires consideration of the entire content of the file. However, the panel reserved the right to reconsider the possibility of staying the infringement proceedings at a later stage.
Issue
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