2024-11-21 - CoA - Meril et al. v. Edwards Lifesciences - UPC_CoA_511/2024

1. Pursuant to R. 222.2 RoP, the Court of Appeal may disregard “requests, facts and evidence” which were not submitted by a party during the proceedings before the Court of First Instance. This wording makes it clear that the rule does not apply to legal arguments. R. 222.2 RoP therefore does not prevent a party from submitting a new legal argument on appeal, provided that the argument is based on the facts and evidence submitted to the Court of First Instance. 2. Art. 33(10) UPCA provides that the Court may stay its proceedings if a rapid decision may be expected from the EPO. This provision has been implemented in both R. 295(g) RoP, which refers to R. 118 RoP, and R. 295(a) RoP. R. 118 RoP contains provisions regarding decisions on the merits. R. 118.2(b) RoP and R. 295(g) RoP are therefore applicable when the case is ready for a decision. Prior to that stage, orders regarding a stay of proceedings pending opposition proceedings are governed by R. 295(a) RoP. 3. Pursuant to Art. 33(10) UPCA and R. 295(a) RoP, the Court may stay proceedings relating to a patent which is also the subject of opposition proceedings before the EPO when a rapid decision may be expected from the EPO. These provisions do not require that a final decision of the EPO may be expected rapidly. The Court may stay proceedings under Art. 33(10) UPCA and R. 295(a) RoP where it can be expected that the Opposition Division of the EPO will give its decision rapidly, even if it is likely that such a decision will be appealed. 4. A stay pursuant to Art. 33(10) UPCA and R. 295(a) RoP is one of the mechanisms available to the Court to deal with parallel infringement and opposition proceedings. In particular, it serves to prevent conflicts between its decisions in infringement proceedings and the decisions issued by the EPO in opposition proceedings. Unlike decisions in parallel revocation proceedings and opposition proceedings, which are not irreconcilable (Court of Appeal 28 May 20204, APL_3507/2024, UPC_CoA_22/2024, Carrier/BITZER, paragraph 25), decisions in parallel infringement and opposition proceedings may conflict. Such conflicts may arise in particular if the EPO revokes a patent during opposition proceedings that formed the basis for an order of the Court in infringement proceedings. Such conflicts should, in principle, be avoided, even if the EPO’s decision is appealable and its effects are suspended pending appeal. A stay of infringement proceedings pursuant to Art. 33(10) UPCA and R. 295(a) RoP can be used to achieve that purpose. 5. The Court is not required to stay proceedings if a final or non-final rapid decision may be expected from the EPO. Art. 33(10) UPCA and R. 295(a) RoP provide that the Court “may” do so. The word “may” means that the Court has a discretionary power. Whether or not a stay is granted depends on the balance of interests of the parties and the specific circumstances of the case, such as the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked in the opposition proceedings. In this context, the fact that the expected EPO decision is not a final decision and is likely to be appealed is just one of several factors that may be taken into account.

The Court of Appeal set aside an order of the Court of first Instance rejecting a stay of proceedings pending a decision by the EPO in Opposition proceedings. The CoA stated that a decision was to be expected rapidly; further there would be different measures than a stay to avoid conflicting decisions.