Short Summary
This is a procedural order from the Nordic-Baltic Regional Division of the Unified Patent Court concerning an infringement action and counterclaims for revocation related to European Patent EP 2 628 464. The proceedings had been stayed pending the written decision of the Boards of Appeal of the European Patent Office (TBA), which subsequently rejected the appeal as inadmissible and remitted the case to the EPO Opposition Division with an order to maintain the patent in amended form. The court set a timetable for the resumption of proceedings, requiring the claimant to file an amended statement of claim within 14 days and the defendants to file an amended defence and counterclaim for revocation within 42 days.
Detailed Summary
This procedural order concerns UPC_CFI_8/2023, an infringement action and counterclaims for revocation filed by Edwards Lifesciences Corporation (the claimant/proprietor of European Patent EP 2 628 464 B1) against four defendants: Meril Lifesciences PVT Limited (India), Meril GmbH (Germany), Smis International OÜ (Estonia), and Sormedica UAB (Lithuania). The patent at issue relates to Edwards Lifesciences Corporation.
The proceedings had been stayed on 9 January 2024 pending the written decision of the Boards of Appeal of the European Patent Office (TBA) in case no. T0308/23-3.2.01. Once the written decision became available, the parties proposed different timetables for the resumption of proceedings. The TBA decision concerned EP 2 628 464 B1, with Meril Germany having been the sole opponent in the EPO opposition/appeal proceedings. Oral proceedings before the EPO TBA took place on 3 June 2024, and the written reasons were made available on 16 July 2024. The TBA rejected the appeal as inadmissible, set aside the decision under appeal, and remitted the case to the EPO Opposition Division with the order to maintain EP 464 in amended form according to Auxiliary Request 6, which was filed by Edwards with a letter of 24 May 2024.
Edwards proposed that the claimant lodge an amended statement of claim within 14 days, the defendants file an amended defence and counterclaims for revocation within 28 days, and thereafter the timetable proceed according to the Rules of Procedure (RoP). Edwards argued that R. 30 RoP did not apply because the claims as granted were no longer relevant and the patent would be amended centrally. Edwards further argued that the defendants would not suffer prejudice because Meril Germany was the opponent in EPO proceedings, Meril India filed an intervention, all defendants shared the same legal representatives, the amendments were relatively minor, and a generous timetable was proposed.
The defendants agreed with the 14-day deadline for the amended statement of claim but requested 3 months (alternatively 2 months) instead of 28 days for filing their amended defence and counterclaim for revocation. They argued that Rules 23 and 25 RoP provide for a 3-month deadline, and that the limitations to claim 1 as maintained by the TBA were not based on any of the granted dependent claims, making a simple 're-filing' inappropriate. They reserved their right to amend and supplement their counterclaim for revocation.
The court reasoned that under R. 296.3 RoP, time ceases to run during a stay and begins to run afresh once the stay ends. The court noted that the procedural rules intentionally leave the court wide discretion to design the procedure in accordance with procedural economy and flexibility. The court found that this was essentially a situation requiring the claimant to bring a new action with clarified circumstances and the defendant to put forward new defence derived from the TBA decision, requiring the written procedure to be repeated but with shorter time limits. The court noted that the parties were familiar with the dispute, and that defendants not participating in EPO proceedings were represented by representatives who did participate.
The court ordered: (1) the claimant to lodge the Amended Statement of Claim within 14 days (by 30.08.2024); (2) the defendants to file the Amended Defence and Counterclaim for Revocation within 42 days (by 27.09.2024); and (3) the claimant to lodge the Defence to the Counterclaim for Revocation and Reply to Statement of Defence in accordance with R. 29(a) RoP. The court stated it would rely on resubmitted documents as the positions of the parties in further proceedings. The order is not subject to appeal.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Nordic Baltic Regional Division. Understanding the court's reasoning in Edwards Lifesciences Corporation vs Meril Lifesciences PVT Limited, Meril GmbH, Smis International OÜ, and Sormedica UAB is valuable context for structuring arguments or assessing risk in similar proceedings.
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