Short Summary
Fisher & Paykel Healthcare Limited brought a revocation action against Flexicare (Group) Limited concerning European Patent EP 4 185 356, which relates to a nasal cannula with a swivel connection. The Court of First Instance of the Unified Patent Court (Central Division Milan) held that claim 1 as granted and its dependent claims lack novelty over prior art document D2, and that auxiliary request 1 also lacks novelty over D2 while auxiliary requests 2 to 13 lack clarity. The patent was revoked in its entirety, the application to amend was dismissed, and the defendant was ordered to bear the costs.
Detailed Summary
This case concerns a revocation action filed by Fisher & Paykel Healthcare Limited (claimant) against Flexicare (Group) Limited (defendant) regarding European Patent EP 4 185 356, titled 'Nasal Cannula.' The patent was filed on 23 July 2021, claiming priority from 24 July 2020 (GB 202011539), and was granted with mention published on 28 August 2024. No opposition was filed at the EPO, and the patent was registered with unitary effect. The defendant is the registered proprietor.
The patent relates to a nasal cannula configured to deliver airflow to a user, comprising a manifold, a connector for attaching a gas tube, and a pair of non-sealing nasal prongs. Claim 1 is characterised in that the connector forms a swivel connection with the manifold providing relative rotation, with the axis of rotation substantially normal to the face of the user, and that the cannula includes a selective retainer means configured to hold the connector in a plurality of rotary positions relative to the manifold.
The claimant argued that the patent was invalid for lack of novelty and inventive step, that the subject matter of claims 1 and 4 extended beyond the content of the application as filed (added matter), and that claim 4 lacked sufficient clarity. The claimant requested revocation of the patent in its entirety and that the defendant bear the costs.
The defendant filed a defence and an application to amend the patent, introducing 13 auxiliary requests. The defendant requested dismissal of the revocation action, or alternatively maintenance of the patent based on the auxiliary requests. Additional auxiliary requests filed later were not admitted into the proceedings.
On the merits, the Court conducted a detailed feature-by-feature analysis of claim 1 and compared it to the disclosure of prior art document D2. The Court found that D2 directly and unambiguously disclosed all features of claim 1, including the swivel connection with an axis of rotation substantially normal to the user's face and the selective retainer means for holding the connector in multiple rotary positions. The Court emphasised that when assessing novelty, the disclosure of the prior art document must be examined overall and compared to the scope of the patent; if any mapping leads to the conclusion that the prior art is novelty-destroying, the patent must be revoked.
Regarding the dependent claims, the Court noted that the defendant had only argued their novelty by virtue of dependency on claim 1, and since claim 1 was found not novel, this line of argument failed. The defendant had not specifically defended the novelty of the dependent claims independently.
Auxiliary request 1 was found admissible but also lacked novelty over D2. Auxiliary requests 2 to 13 were found to lack clarity and were therefore not allowable. The Court held that the restructuring required to convert dependent claims into independent claims cannot be provided by the Court itself, and the patentee must formally restructure the patent to ensure clarity and consistency under Article 84 EPC.
The Court concluded that the patent was revoked in its entirety with effect on the territory of all Contracting Member States to the Agreement on a Unified Patent Court. The application to amend the patent was dismissed. The defendant, as the unsuccessful party, was ordered to bear the legal costs incurred by the claimant. The value of the case was set at EUR 250,000 as agreed by the parties.
Practitioner Note
This case demonstrates the evidentiary and procedural standards applied in patent matters before Milan (IT) Central Division- Section. Understanding the court's reasoning in Fisher & Paykel Healthcare Limited vs Flexicare (Group) Limited is valuable context for structuring arguments or assessing risk in similar proceedings.
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