2025-10-20 - CD Paris - Meril et al. v. Meril et al. - UPC_CFI_189/2024 + UPC_CFI_434/2024

1. The assessment of the inventive step requires: first, the identification of the objective problem underlying the claimed invention, which must be carried out in light of the patent’s specification; second, the identification of the state of the art at the time of the claimed invention, which can be represented by one or more realistic starting points and is left to the initiative of the parties; and, finally, whether it would have been obvious for the person skilled in the art to arrive at the claimed solution. 2. For the assessment of the inventive step, a “holistic approach” – that is, a broader way of assessing non-obviousness by considering the invention as a whole, rather than just focusing upon isolated distinguishing features – appears, in general, to be more appropriate. 3. A realistic starting point is a document “of interest” for solving the objective problem. In this regard, it may be assumed that realistic starting points, in general, are the pieces of evidence which disclose the main relevant features as those of the challenged patent and for that reason have constituted the basis for the developing of the inventive idea and/or which address the same or a similar underlying problem. 4. While a general injunction to restrain future infringements is the normal remedy for the patentee where its patent is infringed, the Court has a discretionary power and must refuse granting an injunction or issuing corrective measures where it would be disproportionate or unreasonably detrimental to the interests of third parties. 5. Excluding a certain product from the range of those available to medical practitioners for the performance of certain procedures does not engage in itself a relevant public interest, because it does not necessarily carry with it the implication that, should the choice not been available, all the patients could not be treated adequately with the remaining products.

The Paris Central Division revoked the patent as granted for added matter, held Auxiliary Request 1 anticipated, and maintained the patent as amended by Auxiliary Request 2, which it then found infringed by the counterclaim defendants' transcatheter heart valve systems. Three headnotes set out the inventive-step method: the objective problem is identified from the specification, the state of the art is represented by one or more realistic starting points whose identification is left to the parties because the Court cannot acquire prior art of its own motion, and a realistic starting point is a document 'of interest' which discloses the main relevant features or addresses the same or a similar problem. A holistic approach, considering the invention as a whole rather than isolated distinguishing features, is in general the more appropriate way to assess non-obviousness. Two further headnotes govern the injunction: it is the normal remedy but the Court has a discretion and must refuse it, or tailor it, where it would be disproportionate or unreasonably detrimental to third parties, and merely removing one product from the range available to physicians does not of itself engage a public interest. On that basis the division carved XL-size valves out of the injunction, and — departing from the Munich Local Division on the same facts — refused to subject their use to the patentee's Medical Request Portal.