Key takeaways
Jurisdiction over multiple defendants with commercial relationship and same infringement (Art. 33(1)(b) UPCA).
Multiple defendants can be sued at the domicile, principal place of business, or place of business of one defendant if they have a commercial relationship and the action concerns the same alleged infringement (“anchor-defendant”). Headnote 1 of the decision clarifies: In the context of an EP without unitary effect, the term “the same infringement” addresses situations where multiple defendants are accused of infringing the relevant national designations of (i) the same European patent by (ii) the same product or process.
Problem-solution Approach for assessing Inventive Step (Art. 56 EPC).
The problem-solution approach (“PSA”) developed by the EPO is applied to enhance legal certainty and align UPC jurisprudence with EPO practices. The court clarifies (cf. page 68 of the decision) that both tests (the “German” and the “PSA”), if correctly applied, should lead to the same results in the majority of the cases. Both tests require a “realistic starting point” and an “incentive” for the skilled person to amend the technical solution disclosed by the starting point to arrive at the patented solution. Moreover, the court held that both test can be applied as a tool to assess inventive step as none of the tests is enshrined in the European Patent Convention (EPC) and both basically lead to the same results. Here, the court applied the PSA, highlighting the need for legal certainty and for alignment of the jurisprudence of the UPC with the jurisprudence of the EPO and the BoA.
Cease-and-desist Declarations without Penalty Clauses are inadequate (Art. 63 UPCA).
A cease-and-desist declarations without penalty clauses cannot secure the patentee’s interest as effectively as a court order, risking continued infringement (see Headnote 3).
Immediate and Direct Enforceability of Decisions (Rule 354.1 RoP).
Decisions are generally immediately and directly enforceable from the date of service in each Contracting Member State subject to R. 118.8 and R. 352 RoP. As no request for an enforcement security was made and the court did not see any reason to do so ex officio, no security must be lodged before the enforcement of the decision ad there is no condition under R. 118.2.a RoP.
Division
Local Division Munich
UPC number
UPC_CFI_501/2023
Type of proceedings
Main infringement action with counterclaim for revocation
Parties
Claimant: Edwards Lifesciences Corporation
Defendants:
Meril GmbH,
Meril Life Sciences Pvt Ltd.,
Meril Italy S.r.l.
Patent
EP 3 669 828 B2
Jurisdictions
UPC Contracting Member States, excluding Malta
Body of legislation / Rules
Rule 354.1 RoP, Rule 118.2.a RoP, Rule 118.8 RoP, Art. 33(1)(b) UPCA, Art. 56 EPC, Art. 63 UPCA, Art. 69 EPC, Art. 64 UPCA, Art. 67 UPCA, Art. 68 UPCA
