Marks & Clerk wins patent revocation case

In a notable legal victory, Marks & Clerk has successfully secured the revocation of a significant European patent belonging to Edwards Lifesciences for their client, Meril. The patent in question, EP 4 151 181 B1, played an important role in an ongoing dispute between the two companies and the decision from the European Patent Office (EPO) Boards of Appeal underscores the continuing relevance of EPO proceedings within the European patent landscape.

The patent had previously stood the test of scrutiny by both the Court of First Instance of the Unified Patent Court (UPC) and the EPO Opposition Division. Marks & Clerk orchestrated a coordinated strategy, launching parallel revocation proceedings in the Paris Central Division of the UPC while simultaneously engaging in opposition proceedings before the EPO. By running these cases in tandem, they aimed to establish a consistent and effective approach across both jurisdictions.

Initially, the UPC upheld the patent in an amended form, agreeing with Edwards' second auxiliary request and concluded that Meril infringed the patent. However, shortly thereafter, the EPO opposition hearing reached the same conclusion regarding the validity of the claims set. Meril chose to appeal both the UPC and EPO decisions.

Before the EPO Boards of Appeal, Marks & Clerk convincingly argued that both the patent as granted and the claims upheld in the auxiliary request were invalid due to lack of inventive step. Following discussions regarding Edwards' remaining auxiliary requests, the company opted to withdraw all requests beyond the previously upheld claim set, which effectively brought the appeal proceedings to a conclusion. As a result, the Board overturned the earlier decision made by the Opposition Division and revoked the patent.

Interestingly, the Board's decision to overturn the validity of Edwards' second auxiliary request drew upon prior art that had been evaluated and ultimately dismissed by the UPC. This highlights the independent function of the EPO Boards of Appeal within the European patent system. While the UPC had previously deemed the patent valid and infringed, the EPO Boards reached a contrasting conclusion, ultimately declaring it invalid.

As the patent litigation landscape in Europe evolves, this case illustrates the critical role the EPO plays for parties seeking to contest patent validity. Additionally, it showcases the increasing significance of integrating patent attorney and litigation expertise in European patent disputes. With the trend towards validity challenges occurring across multiple forums, entities can greatly benefit from a coordinated strategy that leverages both technical knowledge and legal prowess.

Marks & Clerk’s unique position as a fully integrated firm, with patent attorneys and litigators working under one roof, enables them to adeptly assist clients in navigating this complicated landscape. Partner and Patent Attorney Greg Carty-Hornsby expressed pride in the result, saying, “We are proud to have secured the revocation of this important patent for our client, Meril. The patent formed a key part of the wider dispute between Meril and Edwards. Although the first-instance decisions were disappointing, we remained confident in our position and successfully overturned the outcome on appeal, achieving a result of significant strategic importance for our client.”

Nilay Lad, General Manager for Intellectual Property at Meril, added, “We are delighted with this result and with the support provided by Marks & Clerk throughout the case. Their dedication, expertise and determination played a crucial role in securing a significant victory.”