2024-12-26 - CD Paris - Advanced Bionics et al. v. Advanced Bionics et al. - UPC_CFI_338/2023, UPC_CFI_410/2023
- Aktenzeichen:
- UPC_CFI_338/2023, UPC_CFI_410/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Paris (FR) Central Division - Seat
- Art:
- Order
- Parteien:
- Advanced Bionics v. MED-EL
Kernaussage: 1.
2024-12-26 - CD Paris - Advanced Bionics et al.
v.
Advanced Bionics et al. - UPC_CFI_338/2023, UPC_CFI_410/2023
1. In deference to the need for expeditious judgments and efficient proceedings, the Court may decide the case even by overturning the priority order of the issues to be decided where a determination can be made on the basis of a more easily resolvable reason - albeit logically subordinate - without examining those that are antecedent.
2. Although not a party to the proceedings, the inventor of the patent at suit cannot be examined as a witness or expert because he/she may have a direct interest in the outcome of the case and does not meet the requirements of Rule 181 (1) (a) and (b) ‘RoP’ for impartiality, objectivity and independence.
The Paris Central Division rejected the revocation action and counterclaims for revocation, upholding the patent in an amended form. The Court made statements regarding the priority order of issues to be decided - which it deemed to be changeable to expedite the proceedings - and the inventor's ability to be a witness - which it denied.
Stichwörter
insufficiency of the disclosure,
added matter,
lack of inventive step
Nichtigkeitsgründe
Art. 138 EPCInventive Step
Patent survived (this ground)Art. 56 EPC · Art. 138(1)(a) EPC
“Lack of inventive step not proven [85-130]. Zimmerling is the suitable starting point; Charvin, Teissl 1, Teissl 2, Hochmair are either not suitable or lead the skilled person away. Zimmerling + CGK is insufficient because CGK of axially magnetised disc magnets and the repulsive-force disadvantage of diametrical dipoles parallel to the skin steer the skilled person away from the claimed solution.”
Added Matter
Partially invalid (this ground)Art. 123(2) EPC · Art. 138(1)(c) EPC
“Claim 1 as granted contains added subject-matter: replacing 'implantable system' with 'implant system' and omitting the exhaustive list of four implant types in para. [0010] of the original application is an impermissible generalisation (Art. 123(2) EPC) [75-80]. Overcome by Auxiliary Request 0a, which combines granted claims 1 and 10 and reinstates the list [82-84].”
Insufficiency of Disclosure
Patent survived (this ground)Art. 83 EPC · Art. 138(1)(b) EPC
“The alleged insufficiency was not proven [65-74]. Claim 1 read with feature 1.2.2 (magnetic dipole parallel to the plane of the coil housing) necessarily limits rotation to the plane of the coil housing around an axis perpendicular to it; the description paras. [0014]-[0025] teach sufficient working embodiments for the skilled person.”