Meril v Edwards (UPC_CoA_511/2024)
Decision date:
21 November 2024
Osborne Clarke summary
- This decision concerned Edwards' patent relating to a low profile delivery system for transcatheter heart valves. Edwards had commenced an infringement action against Meril in the Nordic-Baltic RD. In the meantime, an opposition was filed against the grant of the patent at the EPO. The EPO issued a preliminary non-binding opinion stating that the grounds for opposition prejudiced the maintenance of the patent and accelerated the opposition proceedings.
- Shortly after this, Meril filed counterclaims for revocation and in response Edwards filed applications to amend the patent. Meril also filed an application in the infringement proceedings requesting that the court stay the infringement proceedings pending a decision by the Opposition Division on the validity of the patent. The Nordic-Baltic RD rejected Meril's stay request, finding that it could be reasonably assumed that the Opposition Division's decision would be appealed and therefore the final decision from the EPO could not be expected rapidly as required by Article 33(10) UPCA and Rule 295(a) RoP.
- Meril filed an appeal at the Court of Appeal, requesting that the Nordic-Baltic RD's order be set aside and the infringement proceedings be stayed. The Court of Appeal referred the case back to the panel of the Nordic-Baltic RD that issued the order for further consideration of the request for a stay, on the grounds that it had erred in refusing to grant the requested stay solely on the basis of its finding that the final decision in the opposition proceedings could not be expected rapidly.
- The court stated that Article 33(1) of the UPC Agreement provides that the court may stay proceedings if a rapid decision may be expected from the EPO. Meril was correct to argue that provisions of Article 33(10) UPCA and Rule 295(a) RoP do not require a final decision of the EPO, and therefore that the proceedings may be stayed in expectation of a rapid decision of the Opposition Division. The Court of Appeal concluded that the approach of the Nordic-Baltic RD to making a decision was incorrect. It should have considered whether a rapid decision of the Opposition Division could be expected rather than a final decision, taking into account the balance of interests of the parties and other circumstances of the case.
Issue
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