Advanced Bionics may continue to sell its cochlear implant in the Netherlands, after the District Court of The Hague ruled that the company did not infringe a patent held by competitor MED-EL. However, the Europe-wide dispute is far from over, with parallel proceedings ongoing in the UK and Germany.
3 February 2023 by Mathieu Klos
Advanced Bionics’ important hearing aid product “HiRes™ Ultra 3D Cochlear Implant” does not infringe competitor MED-EL’s European patent EP 31 38 605. The District Court of The Hague has therefore ruled that the company can continue selling this in the Netherlands, deciding that Advanced Bionics’ HiRes products do not fall under the scope of the current version of EP 605 (case ID: C/09/628029). The Technical Boards of Appeal at the European Patent Office had restricted the patent earlier in the course of proceedings.
Advanced Bionics and MED-EL, along with a third company, Cochlear Corporation, are the market leaders with regard to cochlear implants. The case, which spans Europe, is hugely significant for Advanced Bionics and the cochlear implant market generally, since Germany and the UK are the company’s biggest European markets. For example, in the UK, the HiRes cochlear implants constitute 95% of the company’s revenue.
Advanced Bionics had sued in the Netherlands for a declaration of non-infringement. The company also asked the court in The Hague, should it find that HiRes infringed EP 605, to declare the patent invalid. Subsequently, Austria-based MED-EL filed counterclaims for patent infringement and demanded damages.
EP 605, entitled ‘MRI-safe disk magnet for implants’, pertains to the magnets used to link the external and internal elements of a cochlear implant. Cochlear implants are a special type of hearing aid which stimulate the auditory nervous system in the cochlear. This allows people with limited or no hearing to perceive sounds.
Specifically, the current patent covers the shape and movement of the implant within the skull when the user is placed inside an MRI scanner. Cochlear implant systems employ this technology, which both companies sell and for which both have patents pending.
Initially, Advanced Bionics had filed an unsuccessful opposition to the granting of EP 605. The EPO Opposition Division had upheld the patent in full in March 2021. Advanced Bionics had more success in an appeal against this decision, when in September 2022 the Technical Boards of Appeal confirmed the patent in a limited form.
The decision then impacted the Dutch proceedings, with the subsequent oral hearing in October 2022 focusing on whether the HiRes implant infringed the patent, even in its amended form. This posed a difficult decision for the judges; at that time, the EPO had not yet published the amended description of the patent.
However, because the judges concluded that HiRes did not infringe EP 605, they did not address the legal validity of the patent-in-suit any further. The judges thus rejected MED-EL’s counterclaims.
It is likely that MED-EL will appeal the decision. If the appeal judges decide that Advanced Bionics does infringe EP 605, they will also have to decide on the validity of the Dutch part of the patent.
In July 2022, the High Court in London found MED-EL’s EP 605 invalid on the grounds of obviousness. Advanced Bionics had filed a claim against the medical technology company’s patent, seeking non-infringement and revocation. But the High Court ruled before the EPO amended the patent, with presiding deputy judge Campbell Forysth refusing permission to appeal. Meanwhile, MED-EL has asked the Court of Appeal for permission to appeal.
In March 2022, the Regional Court Mannheim ruled that Advanced Bionics infringes the patent in its original version. It also issued an injunction against the sale of HiRes in Germany. Advanced Bionics appealed to the Higher Regional Court in Karlsruhe. The two companies are also facing each other in the US.
De Brauw Blackstone Westbroek represents Advanced Bionics in the Netherlands, with partner Gertjan Kuipers leading the patent team of this Dutch full-service firm. He has a long-standing relationship with the company, which was originally founded in California. Now the Switzerland-based Sonova Group owns Advanced Bionics.
The London office of US firm Kirkland & Ellis acts for Advanced Bionics in the UK proceedings. The firm is also acting as global coordinating counsel, overseeing the strategy for the multiple parallel proceedings. Kirkland partner Marc Sernel represents the medical technology company in the US case. Sernel’s relationship with Advanced Bionics goes back to 2018.
In the Mannheim proceedings, IP boutique Kather Augenstein represents Advanced Bionics, with partners Peter Kather and Miriam Kiefer leading the team. Munich-based patent attorney firm Schwan Schorer & Partner is running the opposition against MED-EL’s EP 605.
The relationship between the Dutch patent litigation team of Simmons & Simmons and MED-EL is also very new. Partner Bas Berghuis leads the team, which came into the picture following recommendation from German representatives. In Germany, mixed IP firm Boehmert & Boehmert represents MED-EL, with partner Michael Rüberg handling the litigation. On the patent attorney side, Andreas Lucke oversees the EPO proceedings.
At the same time, London-based IP boutique Powell Gilbert acted for MED-EL in the UK proceedings, led by partner Peter Damerell. At the end of 2021, the firm took over the case from the London office of Osborne Clarke. Boston-based firm Sunstein represents MED-EL in the US.
For Advanced Bionics
De Brauw Blackstone Westbroek (Amsterdam): Gertjan Kuipers (lead, partner); associates: Bertrand ter Woort, Bram Jaarsma
Simmons & Simmons (Amsterdam): Bas Berghius van Woortman (lead, partner); associates: Sebastien Versaevel (patent attorney), Daisy Termeulen
District Court of The Hague, The Hague
Margot Kokke (presiding judge), J.E. Bierling, Hugo Meinders