2024-12-26 - CD Paris - Advanced Bionics v. MED-EL - UPC_CFI_338/2023
- Aktenzeichen:
- UPC_CFI_338/2023
- Datum:
- Spruchkörper:
- Court of First Instance - Paris (FR) Central Division - Seat
- Art:
- Order
- Parteien:
- Advanced Bionics AG v. MED-EL Elektromedizinische Geräte GmbH
Kernaussage: The Paris Central Division rejected Advanced Bionics's consolidated revocation action and counterclaim for revocation against MED-EL's MRI-safe cochlear-implant disc-magnet patent EP 4 074 373, maintaining the patent in amended form under Auxiliary Request 0a.
2024-12-26 - CD Paris - Advanced Bionics
v.
MED-EL - UPC_CFI_338/2023
notable
The Paris Central Division rejected Advanced Bionics's consolidated revocation action and counterclaim for revocation against MED-EL's MRI-safe cochlear-implant disc-magnet patent EP 4 074 373, maintaining the patent in amended form under Auxiliary Request 0a. The insufficiency attack failed because claim 1 read with the parallel-dipole feature necessarily limits rotation to the plane of the coil housing, which the skilled person can carry out without undue burden. Added matter was found in the granted claim 1 (generalising 'implantable system' to 'implant system' without the exhaustive list of para. [0010] of the parent application) but was overcome by Auxiliary Request 0a, which adds the limitation to one of four specified implant systems. Inventive step was maintained: none of Zimmerling + CGK, Zimmerling + Charvin, Zimmerling + Teissl 1, Zimmerling + Hochmair or Zimmerling + Teissl 2 leads the skilled person to a disc-shaped magnet with diametrical magnetisation rotatable around an axis perpendicular to the coil housing. The decision establishes two headnote-level procedural rules: (1) the Court may decide logically subordinate issues first where they dispose of the case more easily and expeditiously; (2) the inventor of the patent in suit cannot be heard as witness or expert because of direct interest — failing the impartiality, objectivity and independence requirements of R. 181(1)(a), (b) RoP. The Court also treated obviousness as a question of law, not fact, refusing to adopt the weight attached by the English High Court to the inventor's expert-style statements.
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.”