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Overview · Filed: Dec 27, 2023

UPC_CFI_501/2023

PROSTHETIC HEART VALVE

InfringementMain Infringement ActionMunich LDInfringementCase Closed
OverviewDecisionsReasoningCitationsDocumentsTimeline
Coverage: Partial.Reasoning extracted with partial coverage — some sections may be incomplete.
Plain-English summary

Edwards Lifesciences Corporation sued Meril GmbH, Meril Life Sciences Pvt Ltd, and Meril Italy S.r.l. at the Munich Local Division for infringement of EP 3 669 828 covering a prosthetic heart valve, based on Meril's Myval THV transcatheter aortic valve replacement. The court found all three defendants jointly and severally liable for infringement, dismissed Meril's revocation counterclaim upholding patent validity, and awarded Edwards an injunction, recall, destruction, disclosure, EUR 663,000 provisional damages, and publication of the decision in five trade journals.

Accepted arguments
What the court agreed with — by party.

  • multiple defendants domiciled in different member states may be sued at one UPC division if they have a commercial relationship and the action concerns the same infringement of the same European patent designations

    ClaimantLegal basis: Art. 33(1)(b) UPCA

    Note: Headnote 1: the court interpreted 'same infringement' as requiring accusation of infringing the same national designations of the same European patent by the same product, aligning with UPCA's goal of overcoming fragmented litigation.

  • EP 3 669 828 (prosthetic heart valve) is valid and not obvious over the prior art

    ClaimantLegal basis: Art. 56 EPC; Art. 65 UPCA

    Note: The court upheld the patent on inventive step, applying the problem-solution approach as the primary tool (Headnote 2).

  • a cease-and-desist declaration without penalty clause from only some group defendants does not eliminate the risk of repetition

    ClaimantLegal basis: Art. 63 UPCA

    Note: Headnote 3: injunction remains necessary even where some group members filed cease-and-desist declarations without penalty clauses, as group companies could reorganise to continue infringement.

  • Meril defendants infringe EP 3 669 828 by marketing the Myval THV transcatheter heart valve

    ClaimantLegal basis: Art. 25 UPCA

    Note: The court found infringement and granted injunction, recall, seizure, destruction, information disclosure, provisional damages of EUR 663,000, and publication of decision in five media outlets.

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

  • EP 3 669 828 lacks inventive step and should be revoked

    RespondentLegal basis: Art. 56 EPC; Art. 138(1)(a) EPC

    Reason: The invalidity counterclaim was dismissed; the court found the patent valid applying the problem-solution approach, concluding the claimed heart valve design was not obvious over the prior art.

  • cease-and-desist declarations filed by some Meril defendants suffice to negate the need for a court injunction

    RespondentLegal basis: Art. 63 UPCA

    Reason: Court held that partial cease-and-desist declarations without penalty clauses from some group members do not adequately protect the patentee where the group as a whole can reorganise to continue infringement.

Key legal principles
Doctrines and rules cited in the reasoning.
multi-defendant jurisdiction under Art. 33(1)(b) UPCA requires commercial relationship and same infringement of same national patent designations by same productproblem-solution approach applied as primary inventive step tool to align UPC jurisprudence with EPO and Boards of Appealcease-and-desist declaration without penalty clause from partial group of defendants insufficient to preclude injunctionimmediately and directly enforceable decision under R. 354.1 RoP does not require security under R. 118.2(a) RoPprovisional damages award alongside referral of full quantum to separate procedure

Browse other cases on this principle.

Claim construction notes

The claims cover a prosthetic heart valve (transcatheter aortic valve replacement). The court interpreted the claims of EP 3 669 828 to cover the Myval THV design; the invalidity counterclaim required the court to assess whether the claimed valve design was obvious, applying the problem-solution approach to the prior art in the cardiac implant field.