ACT 459987/2023
—·EP3646825 +1 more: A SYSTEM COMPRISING A PROSTHETIC VALVE AND A DELIVERY CATHETER
- Verfahrensdetails
- Status—VerfahrensartVerletzungKategorieHauptverletzungsklage
- Parteien
- KlägerVertreter: Boris Kreye (Bird & Bird LLP); Elsa Tzschoppe (Bird & Bird LLP)BeklagteVertreter: Andreas von Falck (Hogan Lovells International LLP); Roman Würtenberger (Hogan Lovells International LLP); Lukas Wollenschlaeger (Hogan Lovells International LLP)
- Division
- Munich LD
- Richter
- Matthias Zigann · Presiding Judge / Judge-Rapporteur (Munich Local Division)
- Technology
- Medical Devices · Implants · Pharmaceutical & Medical
- Sprache
- —
- Erste Entscheidung
- 6. Sept. 2024
- Letzte Entscheidung
- 15. Nov. 2024
- 2024-11-15VerletztUnterlassung angeordnetVerletzung (Hauptsache)Infringement Action
Munich Local Division full merits decision finding that Meril Life Sciences Pvt Ltd and Meril GmbH infringed Edwards Lifesciences Corporation's patent EP 3 646 825 (a heart valve technology patent). The court ordered a permanent injunction to cease and desist from the infringing acts (transcatheter heart valve products) across all UPC contracting states where the patent has effect, recall of infringing products from commercial channels (excluding devices already scheduled for patient implantation by 15 November 2024), destruction of infringing stock, disclosure of information about distribution and quantities, publication of the decision, and an obligation to pay damages (quantum to be determined separately). The defendant's counterclaim for revocation was dismissed, the patent being upheld as valid. Costs were addressed separately.
Rechtsfragen:UPC jurisdiction over pre-June 2023 infringement actsCompetence of chosen German local divisionBifurcation / referral of revocation counterclaim to Central Division and subsequent stayScope of injunctive relief under Art. 34 UPCA across all contracting statesThird-party interests in corrective measures (Art. 64(4) UPCA)Medical device / patient safety carve-out in recall/destruction ordersDamages liability and quantum proceedingsSchadenersatz: Haftung festgestellt, Höhe vorbehalten - 2024-09-06Infringement Action
The Munich Local Division judge-rapporteur issued a procedural order in Edwards Lifesciences v. Meril concerning EP 3 646 825, addressing defendants' arguments that the Central Division Paris first-instance decision on the patent amendment application had failed to consider key invalidity arguments. The judge-rapporteur referred the matter to the full panel, noting that the appeal proceedings before the Court of Appeal would address the alleged deficiencies in the Paris decision.
Rechtsfragen:Sufficiency of reasoning in first-instance decision (right to be heard)Referral to full panel (R. 102.1 RoP)Invalidity arguments not addressed in Paris Central Division decisionCounterclaim for revocation
- 683C206C93F0A3F34B2181F1F2BF5622_en.pdf2024-09-06EN
- 8302EF6857AD1EB45EBA058622E7843A_en.pdf2024-11-15EN
Edwards Lifesciences Corporation sued Meril GmbH and Meril Life Sciences for infringement of EP 3 646 825, a heart valve technology patent, before the Munich Local Division. Following bifurcation and the Central Division Paris upholding the patent in amended form, the Munich Local Division found infringement of transcatheter heart valve products, granted a permanent injunction across all UPC contracting states, ordered recall and destruction (with a carve-out for XL devices already scheduled for patient implantation), and awarded EUR 663,000 in preliminary damages. The counterclaim for revocation was dismissed.
UPC has jurisdiction over acts of infringement committed before 1 June 2023
KlägerRechtsgrundlage: Art. 3(c) and 32(1)(a) UPCAHinweis: The Munich Local Division held that the UPC's jurisdiction extends to pre-UPCA infringement acts, in the absence of conflicting intertemporal provisions.
Infringement action may proceed and be decided despite referral of counterclaim for revocation to the Central Division
KlägerRechtsgrundlage: Art. 32(3b) UPCA; R. 295(c)(i) and (m) RoPHinweis: Following bifurcation and the Central Division Paris upholding the patent (in amended form), the local division found it was required to proceed with the infringement decision; a stay post-central division decision is limited to exceptional circumstances (manifestly prima facie erroneous decisions).
Injunctive relief and corrective measures may be ordered across all contracting member states where the patent has effect
KlägerRechtsgrundlage: Art. 34 UPCAHinweis: The court confirmed that pan-European relief is available once infringement is proven for at least one contracting member state, which Edwards established.
Third-party interests (patient safety) must be considered in scope of corrective measures
BeklagterRechtsgrundlage: Art. 64(4) UPCAHinweis: The court partially accepted this argument, carving out XL devices already scheduled for patient implantation by 15 November 2024 from the recall and destruction orders.
Stay of infringement proceedings warranted because Central Division Paris decision was manifestly and prima facie erroneous for failing to consider key invalidity arguments
BeklagterRechtsgrundlage: R. 295(c)(i) RoPBegründung: The local division held that a stay post-central division decision is only available in exceptional circumstances where the decision is manifestly and prima facie erroneous; the alleged failure to address certain arguments did not meet this threshold, and appeal proceedings were already pending.
Patent EP 3 646 825 is invalid (counterclaim for revocation)
BeklagterRechtsgrundlage: Art. 65 UPCABegründung: The counterclaim for revocation was dismissed; the patent had been upheld (in amended form) by the Central Division Paris Section and was held valid for purposes of the infringement action.
Weitere Fälle zu diesem Grundsatz ansehen.
- Levi (Exhibit HLNK 39)Erfindungsmüh-Kombination
- Alon (Exhibit HLNK 49)Erfindungsmüh-Kombination
- Fontaine (Exhibit HLNK 25)Erfindungsmüh-Kombination
- EP 3 583 920 B1 (family member)Hintergrund
The excerpt references that the patent was upheld by the Central Division Paris in its auxiliary request 2 form, meaning the infringement decision was based on amended claim scope. Meril argued the Paris Central Division failed to address added-matter resulting from omission of 'sealing device' feature, novelty attacks based on specific embodiments of Levi, and inventive step starting from Alon alone or combined with Fontaine — but these were appeal points rather than claim construction issues resolved in the infringement judgment itself.