UPC takes narrow definition of ‘party’ after Meril Italy files nullity suit in Paris

The Italian subsidiary of medical device company Meril Life Sciences filed a revocation action against Edwards Lifesciences’ EP 3 646 825 before the Paris central division. Now the court has published an order regarding the basic jurisdiction of such actions. In a hearing on preliminary objections, Paolo Catallozzi, presiding judge and judge rapporteur, addressed the question of whether the central division has jurisdiction – in this instance, if the central division is the correct forum to hear the case.

In principle, any party can file a nullity action with the central division. However, a dispute between Meril and Edwards regarding revocation (No. ACT_551308/2023 UPC_CFI_255/2023) is already pending before the Munich local division. While Meril Italy is not a party to this dispute, it is a wholly owned subsidiary of the defendant in the infringement dispute. Thus, the court has concluded that a nullity action filed by this subsidiary at the central division is not obviously an abuse of rights.

Meril Italy may proceed

Paolo Catallozzi has now ruled that Meril Italy’s nullity action is admissible. The main proceedings will therefore continue at the Paris central division, with the pending Munich local division proceedings also set to continue. Following the decision, the question arose as regard to how the UPC will prevent two chambers of the same court from ruling on the validity of a patent at first instance.

Currenly, there are several possibilities for this in the court’s regulations. For example, the two nullity proceedings could be combined in Munich, or the nullity proceedings pending in Munich local division could be referred to the Paris central division. From a procedural point of view, the developments are exciting for parties currently working on their UPC strategies.

Language not considered

The hearing revolved around the definition of who is a party to the proceedings and what economic interests the parties are pursuing. Preliminary objections, in addition to the division’s jurisdiction, can also address questions regarding the opt-out and language of the proceedings. However, the proceedings between Meril and Edwards did not raise the latter two issues.

The parties can either file an appeal against the rejection of the preliminary objection together with the appeal against the final decision of the court of first instance in the main proceedings, or the parties can file an appeal directly within a 15-day period.

In this case, the Paris division judge was an Italian native speaker, and the lawyers were French, German and English native speakers. The hearing and all communication beforehand was in the language of the patent which in this case is English.

In a multinational dispute

Two proceedings between Meril and Edwards over EP 3 646 825 (ACT_551308/2023 and App_572915/2023) are currently pending at the local division in Munich, with two UPC infringement proceedings also pending at the Stockholm-based Nordic-Baltic division over EP 2 628 464 (case ID: ACT_459769/2023). The case concerns a system comprising a prosthetic valve and a delivery catheter.

At the same time, numerous disputes are ongoing at national courts. In August, the latest decision between Meril and Edwards saw the District Court of The Hague find in favour of Meril. The court rejected the Edwards’ infringement claims and revoked the Dutch part of its patent EP 3 494 930, for a ‘leaflet attachment frame for a prosthetic valve’ (case ID: C/09/630115 HA ZA 22-460), due to lack of novelty. Edwards had sought an injunction.

Extensive counsel

For its first patent dispute in Europe, which took place in Germany, Meril Life Sciences had relied on a team around Hogan Lovells partner Andreas von Falck. The firm also acts for the company in the Netherlands, led by partner Ruud van der Velden, with the Spanish and Italian offices involved in their respective countries. Patent attorney Alexander Klicznik handled the opposition proceedings at the EPO.

In the UK, Meril hired a team from Kirkland & Ellis. Elsewhere, other law firms involved for Meril are Gide Loyrette Nouel in France and Plesner in Denmark. For Meril, a partner team comprised of Emmanuel Larere and Raphaëlle Dequiré-Portier of Gide, and Anne Seibel of Regimbeau, led proceedings in Paris. A team of patent lawyers from the UPC patent litigation collaboration Gide x Regimbeau – Patent Litigation acted for the client. For years, Gide and Regimbeau had cooperated on a non-exclusive basis, making the alliance official in May 2023 just before the UPC opened its doors.

No surprises

Bird & Bird and Powell Gilbert are Edwards Lifesciences’ regular advisors in Europe. Munich partner Boris Kreye represented the company in the Paris proceedings. He also acted for the company in the heart-valve dispute against Boston Scientific until the two parties reached an agreement in early 2019.

Currently, national Bird & Bird teams advise Edwards Lifesciences in some markets. In France in 2021, the Paris team around Anne-Charlotte le Bihan organised a seizure of Meril’s products at a trade show. The company hired Powell Gilbert in the UK, which represents the US medical technology company in various patent disputes. Tess Waldron of Powell Gilbert was in the lead in the proceedings at the central division of the UPC.

Bernhard Thum of Munich-based patent attorney firm Thum & Partner also worked alongside Bird & Bird and Powell Gilbert in the UPC proceedings before the Munich local division.

For Meril Italy
Gide (Paris): Emmanuel Larere, Raphaëlle Dequiré-Portier (both lead, both partner); associates: Luca Chevallier, Ludivine Meissirel-Marquot, Carole-Anne Bauer
Regimbeau (Paris): Anne Seibel (partner); associates: Aurélien Grimberg, Julien Guesnier (all patent attorneys)

For Edwards Lifesciences
Bird & Bird (Munich): Boris Kreye (partner); associates: Elsa Tzschoppe, Ioana Hategan
Powell Gilbert (London): Tess Waldron (partner); associates: Bryce Matthewson

Unified Patent Court, central division, Paris
Paolo Catallozzi (presiding judge and judge rapporteur)