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Overview · Filed: Sep 27, 2023

UPC_CFI_338/2023

MRI-SAFE DISK MAGNET FOR IMPLANTS

RevocationMain Revocation ActionParis CDRevocationCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Advanced Bionics challenged MED-EL's EP 4 074 373 (MRI-safe disk magnet for cochlear and other implants) by revocation action and counterclaim before the Paris Central Division. The court found the patent as granted contained added matter under Art. 123(2) EPC but maintained the patent in amended form (Auxiliary Request 0a), which restricted the claims to specific implant types with a rotatable disc-shaped attachment magnet; insufficiency and inventive-step attacks against the amended claims were also rejected. Costs were allocated 70% to Advanced Bionics and 30% to MED-EL.

Accepted arguments
What the court agreed with — by party.

  • Patent valid as amended by Auxiliary Request 0a: claim 1 restricted to cochlear/middle ear/vestibular/laryngeal pacemaker implant systems with a rotatable disc-shaped attachment magnet in the implant coil housing

    RespondentLegal basis: Art. 65 UPCA; Art. 138 EPC

    Note: The added-matter objection applicable to the patent as granted was overcome by Auxiliary Request 0a; insufficiency and lack of inventive step were also not proven.

  • Insufficiency of disclosure not proven

    RespondentLegal basis: Art. 83 EPC; Art. 138(1)(b) EPC

    Note: Panel found the disclosure sufficient even applying a strict reading.

  • Lack of inventive step of Auxiliary Request 0a not proven

    RespondentLegal basis: Art. 56 EPC

    Note: Advanced Bionics' inventive step attack against the amended claim was rejected.

Rejected arguments
What the court did not agree with — and why.

  • Patent as granted is invalid for added matter (Art. 123(2) EPC)

    ClaimantLegal basis: Art. 123(2) EPC

    Reason: The added-matter objection was found valid for the patent as granted but overcome by the amendment in Auxiliary Request 0a; the panel resolved the case on the basis of the amended claim.

  • Inventor should be heard as a witness or expert

    ClaimantLegal basis: R. 181(1) RoP

    Reason: The inventor may have a direct interest in the outcome and does not meet the R.181(1)(a)(b) requirements of impartiality, objectivity and independence for witnesses or experts.

  • Invalidity on grounds of insufficiency of disclosure and lack of inventive step against Auxiliary Request 0a

    ClaimantLegal basis: Arts. 83, 56 EPC

    Reason: Both grounds found not proven against the amended claims.

Key legal principles
Doctrines and rules cited in the reasoning.
Court may decide the case by resolving a logically subordinate issue first if that issue is more easily determinable (procedural efficiency principle)Inventor is not eligible to serve as witness or expert due to potential direct interest in outcome (R.181(1) RoP requirements of impartiality, objectivity and independence)Added matter overcome by narrowing amendment; remaining invalidity grounds then assessed against amended claimCosts partially attributable to patentee where patent required amendment: here 70% to claimants / 30% to defendant

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Claim construction notes

The amended Claim 1 (Auxiliary Request 0a) requires: a planar implant coil housing containing a signal receiver coil; a rotatable first attachment magnet within the coil housing plane with a magnetic dipole parallel to the plane; and that the implant system is specifically one of a cochlear, middle ear, vestibular, or laryngeal pacemaker implant. The disc shape or cut-away disc shape of the magnet is also specified. These restrictions were key to overcoming the added-matter objection to the granted claims.