Advanced Bionics and Kirkland revoke Med-El cochlear implant patent

The High Court in London has found Med-El Elektromedizinische patent EP 31 38 605 invalid on the grounds of obviousness. This followed Advanced Bionics filing a claim against the medical technology company’s patent, seeking non-infringement and revocation.

Advanced Bionics contended that Med-El’s patent was obvious over a piece of prior art named ‘Zimmerling’, which describes the possible shapes and designs used for cochlear implants. The prior art, as well as the current patent at issue, aim to minimise the movement of the magnet in the patient’s skull during an MRI.

Advanced Bionics retaliates

In July 2021, Advanced Bionics filed a case against Med-El in the UK. This came as a response to actions made by the global company in other jurisdictions. The actions include German proceedings, where Med-El initially sued Advanced Bionics at Mannheim Regional Court for infringement. However, since the European Patent Office opposition case regarding EP 605 was ongoing at the time of the German proceedings, Advanced Bionics initiated proceedings in the UK and the Netherlands before the Mannheim court could reach a finding on infringement.

Advanced Bionics and Med-El, along with a third company, Cochlear Corporation, are the three market leaders with regard to cochlear implants. The case is hugely significant for Advanced Bionics and the cochlear implant market generally, since the device in question amounts to 95% of the company’s UK revenues. Germany and the UK are the company’s biggest European markets.

Claims and counter-claims

Proceedings initially began in the US state of Delaware, when Med-El filed actions against Advanced Bionics. However, the defendant then counterclaimed for infringement and brought six patents back at issue against Med-El in the US. In retaliation, Med-El filed proceedings at Mannheim Regional Court. These are still ongoing, while the parties are also fighting in the Netherlands.

In 2021, following the filing of the Mannheim proceedings, the EPO upheld EP 605 in opposition proceedings. However, a preliminary decision released by the EPO Technical Boards of Appeal, ahead of the planned September release date, implies that it will overturn its original decision and similarly invalidate the patent.

A polarising issue

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. Specifically, this is with regard to the shape and movement of the implant within the skull when the user is placed inside an MRI scanner.

Typically, an MRI scanner could cause the traditionally-circular implant to move within the patient’s skull. Potentially, this movement could cause discomfort or even lead to removal of the implant. The current dispute relates to the shape and internal mechanics of the magnet, which creators of the devices have changed to move freely within the patient’s skull under the influence of MRI magnets.

Katie Coltart

Multi-national proceedings

Advanced Bionics had applied to the UK court to expedite the case. Traditionally, the aim is for the court to invalidate the patent at issue in the UK courts while the proceedings at the Mannheim court are ongoing.

However, the UK High Court was quick to underline that while it did agree to expedite the trial, this was not only to minimise the risk of the Mannheim court filing an automatic injunction against Advanced Bionics. Instead, the court decided a potential injunction in the UK would negatively impact Advanced Bionics.

Shorter trial scheme

Following the decision at the UK High Court, the presiding judge Campbell Forsyth denied the request to appeal. Med-El intends to appeal the decision directly to the Court of Appeal. Now Med-El must pay Advanced Bionics legal costs.

The UK court heard the case under the Shorter Trials Scheme, which is intended to keep proceedings moving by limiting the scope of arguments and claims. In this case, both sides were forced to narrow arguments on the issues and were only allowed two experts each.

This was also Campbell Forsyth’s first time appearing as a deputy judge. Previously, Forsyth was global co-head of the European litigation practice at the London office of Dentons, before moving on to become the latest addition to Mishcon de Reya’s London IP and patent practice.

Peter Damerell

From Boston to Mannheim

The London office of US firm Kirkland & Ellis acted for Advanced Bionics, headed up by partner Katie Coltart. The firm is also acting as global coordinating counsel, overseeing the strategy for the multiple parallel proceedings.

Meanwhile, in the US proceedings, Kirkland partner Marc Sernel represents the medical technology company.

The firm’s UK office began working for Advanced Bionics following the company’s cooperation with Kirkland’s US office in previous litigation. Sernel’s relationship with Advanced Bionics goes back to 2018.

Advisors in Europe

In the Mannheim proceedings, IP boutique Kather Augenstein represents Advanced Bionics, with the team led by partners Peter Kather and Miriam Kiefer. Meanwhile, full-service Dutch firm De Brauw represents the company in the Netherlands, with a team led by partner Gertjan Kuipers.

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, after Med-El switched firms following Advanced Bionic’s successful expedition bid. Senior associate Callum Beamish is also a qualified barrister, also appearing for Med-El in this capacity during the hearing.

In the US, Boston-based firm Sunstein represent Med-El. At the same time, Med-El is represented in Germany by mixed IP firm Boehmert & Boehmert with a team made up of partner Michael Rüberg who handles the litigation. On the patent attorney side, Andreas Lucke oversees the EPO proceedings.

For Advanced Bionics
8 New Square (London): Andrew Lykiardopoulos
Hogarth Chambers (London): Edward Cronan
Kirkland & Ellis (London): Katie Coltart (partner); associates: Will Jensen (of counsel), Nessa Khandaker

For Med-El Elektromedizinische
11 South Square (London): Brian Nicholson
Hogarth Chambers (London): Ben Longstaff
Powell Gilbert (London): Peter Damerell, Siddharth Kusumakar (partners); associates: Callum Beamish (barrister)

England and Wales High Court, London
Campbell Forsyth (deputy presiding judge)