The dispute concerns Edwards Lifesciences’ EP 3 583 920, which protects a prosthetic valve frame. The Examining Division of the EPO granted the patent in 2020.
In spring 2021, the Indian medical device manufacturer Meril, its German subsidiary and the Danish company Mermaid Medical filed an opposition against the grant. In a first-instance decision, the Opposition Division upheld the patent in amended form. The opponents appealed against this decision.
At the same time, Edwards Lifesciences filed an infringement action relating to EP 920 at the Regional Court in Munich. As a date for oral proceedings was set for February 2024, the court asked the EPO to expedite the appeal proceedings. Now the Boards of Appeal have revoked the patent due to added matter. During the oral hearing, the question of inventive step was also discussed.
Pan-European battle
EP 920 is one of several patents protecting various parts of Edwards Lifesciences’ prosthetic heart-valve technology. The US medical device manufacturer has been in dispute with its Indian competitor Meril for years. While in an initial series of lawsuits the US company attacked Meril’s MyVal product line, the current dispute revolves around Meril’s new generation of transcatheter heart valve called Octacore. Some of these proceedings are pending at the UPC.
Two proceedings between Meril and Edwards over EP 3 646 825 (case IDs: ACT_551308/2023 and App_572915/2023) are currently pending at the local division in Munich, with two UPC infringement proceedings also pending at the Stockholm-based Nordic-Baltic division over EP 2 628 464 (case ID: ACT_459769/2023). The case concerns a system comprising a prosthetic valve and a delivery catheter.
Several heart-valve patents at the UPC
Meril’s Italian subsidiary filed a revocation action against Edwards Lifesciences’ EP 3 646 825 before the Paris central division, which the court only recently declared admissible.
At the same time, numerous disputes are ongoing at national courts. In August, the latest decision between Meril and Edwards saw the District Court of The Hague find in favour of Meril. The court rejected the Edwards’ infringement claims and revoked the Dutch part of its patent EP 3 494 930, for a ‘leaflet attachment frame for a prosthetic valve’ (case ID: C/09/630115 HA ZA 22-460), due to lack of novelty. Edwards had sought an injunction.
Long-lasting counsel
Meril Life Sciences has relied on a team around Hogan Lovells partner Andreas von Falck since the first patent dispute in Europe over MyVal. The firm also acts for the company in the Netherlands, led by partner Ruud van der Velden, with the Spanish and Italian offices involved in their respective countries. Patent attorney Alexander Klicznik handled the opposition proceedings at the EPO.
Alexander Klicznik
The team cooperated with patent attorneys from Marks & Clerk. In proceedings before UK courts, Meril hired a team from Kirkland & Ellis. Elsewhere, other law firms involved for Meril are Gide Loyrette Nouel in France and Plesner in Denmark.
Change of representative
The British patent attorney firm Kilburn & Strode represented Edwards Lifesciences in the opposition proceedings over EP 920. The firm cooperated with a team from Powell Gilbert, led by patent litigator Siddharth Kusumakar. The Kilburn team led by partner and patent attorney Jeremy Smith took over the instruction in 2021 from the German law firm Eisenführ Speiser, which is responsible for the filing of this and other related patents-in-suit.
In the parallel proceedings before national courts and the UPC, Bird & Bird and Powell Gilbert are Edwards Lifesciences’ regular advisors in Europe, while Bernhard Thum of Munich-based patent attorney firm Thum & Partner provides technical advice in some of the proceedings.
For Edwards Lifesciences
Kilburn & Strode (London): Jeremy Smith, Caelia Bryn-Jacobsen (both partners); associate: Nico Cousens (all patent attorneys)
Powell Gilbert (London): Siddharth Kusumakar (partner); associate: Bryce Matthewson
For Meril
Hogan Lovells (Düsseldorf): Andreas von Falck, Alexander Klicznik (both lead, both partners), Felipe Zilly (both patent attorneys), Kerstin Jonen (both counsel); associates: Lukas Wollenschlaeger, Roman Würtenberger, Beatrice Wilden, Chia Chuong
Marks & Clerk (Manchester): Jonathan Stafford (partner); associate: Liam O’Connor (both patent attorneys)
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