Edwards Lifesciences Corporation v. Respondent

1

Nordic-Baltic - regional division

UPC_CFI_8/2023

of the Court of First Instance of the Unified Patent Court

delivered on 16/08/2024

APPLICANT/CLAMIMANT

1)

Edwards Lifesciences Corporation

(Applicant) - One Edwards Way - 92614 -

Irvine, California - US

Represented by Magnus Dahlman, Jens Olssson, Siddhartha Kusumakar and Tessa Waldron

RESPONDENT/DEFENDANTS

1)

Meril Lifesciences PVT Limited

(Main proceeding party - Defendant) - Bilakhia House, Survey

No. 135/139, Muktanand Marg, Chala, - 396191 - Vapi, Gujarat

- IN

2)

Meril GmbH

(Main proceeding party - Defendant) - Bornheimer Strasse 135

– 137 - 53119 - Bonn - DE

3)

Smis International OÜ

(Main proceeding party - Defendant) - Harju maakond,

Kesklinna linnaosa, Kaarli pst 9-1a - 10119 - Tallinn - EE

4)

Sormedica UAB

(Main proceeding party - Defendant) - V. Kuzmos str. 28 -

08431 - Vilnius - LT

Represented by Andreas von Falck, Kerstin Jonen, Alexander Klicznik and Beatrice Wilden

PATENT AT ISSUE

Patent no.

Proprietor/s

EP2628464

Edwards Lifesciences Corporation

No

2

DECIDING JUDGE Kai Härmand

COMPOSITION OF PANEL – FULL PANEL

Presiding judge

Stefan Johansson

Judge-rapporteur

Kai Härmand

Legally qualified judge

Rute Lopes

Technically qualified judge Elisabetta Papa

LANGUAGE OF PROCEEDINGS: English

SUBJECT-MATTER OF THE PROCEEDINGS

Infringement action & counterclaims for revocation

STATEMENT OF THE FORMS OF ORDER SOUGHT BY THE PARTIES AND SUMMARY OF FACTS

1. The proceedings have been stayed on 9.01.2024 pending the written decision of the Boards of

Appeal of the European Patent Office (TBA) in case no. T0308/23-3.2.01. The parties have

informed the court that the written decision of the TBA is available. The claimant proposed the

timetable for the resumption of the proceedings.

The defendants have proposed another timetable.

2. The decision of the TBA concerns EP 2 628 464 B1 (EP 464). Edwards is the proprietor of EP

464 and the second defendant / counterclaimant (Meril Germany) was the sole opponent in the EPO

opposition / appeal proceedings. Oral proceedings before the EPO TBA in T0308/23-3-2.01 took

place on 3 June 2024. The written reasons for the EPO’s decision were made available on 16 July

2024. The TBA rejected the appeal as inadmissible; the decision under appeal was set aside and the

case was remitted to the EPO Opposition Division with the order to maintain EP 464 in amended

form according to Auxiliary Request 6', which was filed at the EPO by Edwards with a letter of 24

May 2024 and was the main request at the oral proceedings before the TBA.

Edwards proposed timetable for the orderly resumption of the present UPC proceedings as follows:

a) Edwards shall lodge an amended statement of claim within 14 days of any further order of the

court addressing the requests set out in these submissions;

b) The defendants / counterclaimants shall file an amended defence and counterclaims for

revocation within 28 days of service amended statement of claim; and

c) Thereafter, the timetable shall proceed in the ordinary course according to the timetable set out

in the RoP.

Edwards proposed that the amended pleadings shall not be supplemented or amended in any way,

other than to consequentially address the outcome of the TBA Decision.

Edwards’ position is that this proposed course of action and accompanying timetable will allow the

proceedings to be expeditiously resumed, whilst giving the parties sufficient time to take account of

the findings in the TBA Decision. Edwards’ proposal will also allow the claims as upheld by the

TBA to be introduced into the proceedings in the most efficient way. In particular, R. 30 RoP does

not appear to apply in the present circumstances, given that the claims of EP 464 as granted are no

longer relevant and the patent will be amended centrally. Edwards further submits that the

defendants / counterclaimants will not suffer any preju