UPC Analytics
ENDE

Legal issues

Cross-cutting view of legal principles, recurring arguments, and the prior art the court relies on.

Most-litigated legal principles
Recurring legal principles across 1 cases with reasoning extracted. Success rate counts patentee-favorable outcomes only.
PrincipleCasesDecidedPatentee success
problem-solution approach (noted as not mandatory under epc but applied as consistent with outcome)11100%
patent limitation during proceedings can defeat revocation action11100%
cost-splitting where revocation dismissed only due to in-proceedings amendment11100%
problem-solution approach for inventive step11100%
standstill clause breach does not bar action but may give rise to contractual liability11100%
motivation to combine prior art references required for obviousness11100%
problem-solution approach — court noted it is not mandatory under epc but would not change the outcome if applied11100%
patent maintenance as amended — court can maintain patent in limited form pursuant to auxiliary request11100%
closest prior art identification11100%
costs apportioned where patent is maintained only because defendant (patentee) filed a limitation during proceedings11100%
common general knowledge definition: information commonly known from written sources or practical experience in the relevant technical field11100%
cgk does not necessarily include all publicly available knowledge11100%
problem-solution approach applied: skilled person must have motivation to consult prior art from a different technical field11100%
power consumption constraints relevant to assessing whether cross-field combination is obvious11100%
patent revoked in entirety where invalid as granted and in all auxiliary request forms110%
claimant must provide specific arguments for each dependent claim; reliance on claim 1 reasoning without more is insufficient110%
invalidity defeats infringement action — all infringement claims dismissed110%
auxiliary requests in pi proceedings based on amended claim versions are generally inadmissible110%
filing auxiliary requests with amended claims implies the granted patent is probably invalid110%
pi proceedings under art. 62 upca are assessed solely on the granted claim version110%
Most-rejected arguments
Arguments that the UPC has not accepted, ranked by repeat occurrences across cases.
ArgumentPartyCases
lack of inventive step based on 'levi' as closest prior art combined with disclosure of hexagonal cells in heart valvesClaimant1
all invalidity grounds raised against amended auxiliary request ii are well-foundedClaimant1
lack of inventive step over diaz combined with robertsonClaimant1
lack of inventive step starting from glejboel combined with diaz and/or robertsonClaimant1
revocation of ep 3 646 825 as granted (main request) on grounds of lack of novelty and/or inventive stepClaimant1
lack of inventive step of ar ii claims over levi (closest prior art) in combination with teachings about hexagonal cells in heart valvesClaimant1
claim 1 obvious over cross or pan combined with difonzoClaimant1
claim 1 obvious over pan combined with common general knowledgeClaimant1
ep 3 350 592 as granted is validClaimant1
auxiliary requests 1 and 2 are validClaimant1
auxiliary requests for provisional measures based on amended claim versions should be admittedClaimant1
preliminary cost reimbursement of eur 168,000 should be granted to respondentRespondent1
claim 1 lacks novelty over public prior uses (chilliwack, chime long, festival bay facilities) and d5 (us 2008/0085159)Claimant1
emporia uk and ireland ltd. is a 'straw company' acting as nominee for ex-pert klein gmbh, making them the 'same party' for purposes of art. 33(4) upca, rendering the revocation action inadmissibleRespondent1
auxiliary requests i–xvii save the patent from the invalidity attacksRespondent1
claim 1 of ep 3 831 283 b1 lacks novelty over wo'896Claimant1
claim 1 lacks inventive step starting from wo'896 combined with us'440Claimant1
r. 75(3) rop bars a new counterclaim for revocation concerning the same patent after an earlier revocation actionRespondent1
revocation of claims 1, 3, 4, 5, 6, 9 and 10 of ep 2 875 923 b1 (wall machining machine)Claimant1
ep 3 655 346 b1 as granted is invalid for lack of industrial applicationClaimant1
revocation of ep 4 151 181 b1 as granted for lack of inventive stepClaimant1
edwards' counterclaim for infringement is inadmissible as filed outside the two-month deadline under r. 49 ropClaimant1
injunction should extend to xl-size prosthetic heart valves (exceeding 30 mm diameter)Respondent1
costs application for eur 15,000 arising from rejected public-access-to-register proceedingsClaimant1
claim 1 as granted lacks inventive step / novelty over prior art including fontaine articleClaimant1
Most-cited prior art
References relied on across substantive merits cases, with the role they typically play.
ReferencePredominant roleCases
Levi (unspecified publication)Obviousness combination1
Fontaine (article)Obviousness combination1
WO 2013/012801Background1
EP 3 205 309Background1
EP 2 731 552Background1
Diaz (unspecified publication, liquid drug delivery system)Obviousness combination1
Robertson (unspecified publication, container for solid medicaments)Obviousness combination1
Glejboel (unspecified publication)Obviousness combination1
LeviObviousness combination1
Fontaine articleObviousness combination1
WO 2013/012801 (WO '801 / grandparent application)Background1
CrossObviousness combination1
PanObviousness combination1
DiFonzoObviousness combination1
US 4,558,474 (D1)Obviousness combination1
D3 (publication on hydraulic wave generation with software interface)Obviousness combination1
US 2008/0085159 A1 (D5)Background1
D2, D4, D6Obviousness combination1
Chilliwack, Chime Long, Festival Bay prior usesBackground1
EP 2 264 662 A1 (BP07)Obviousness combination1
US 2006/0253409 (BP08)Obviousness combination1
WO 2012/104474 (application as filed of EP 2 671 173)Background1
WO'896 (glucose monitoring prior art)Obviousness combination1
US'440 (glucose sensor assembly prior art)Obviousness combination1
Levi (prior art document identified as closest prior art)Obviousness combination1