Meril Life Sciences PVT Ltd. et al v. Edwards Lifesciences, Order of the Court of Appeal of the UPC, 21 November 2024, Case no. UPC_CoA_511/2024
Stay of infringement proceedings pending opposition
Meril filed an application in infringement proceedings requesting that the Court stay the infringement proceedings pending a decision by the Opposition Division of the EPO on the validity of the patent at issue. The CFI finds that the infringement proceedings shall not be stayed. Meril appealed.
The Court of Appeal now sets aside the impugned order and refers the case back to the panel of the Court of First Instance that issued the impugned order for further consideration of Meril’s request for a stay.
“Unlike decisions in parallel revocation proceedings and opposition proceedings, which are not irreconcilable (Court of Appeal 28 May 20204, APL_3507/2024, UPC_CoA_22/2024, Carrier/BITZER, paragraph 25), decisions in parallel infringement and opposition proceedings may conflict. Such conflicts may arise in particular if the EPO revokes a patent during opposition proceedings that formed the basis for an order of the Court in infringement proceedings. These conflicts should, in principle, be avoided, even if the EPO’s decision is appealable and its effects are suspended pending appeal. A stay of infringement proceedings pursuant to Art. 33(10) UPCA and R. 295(a) RoP can be used to achieve this purpose.
“The Court is not required to stay proceedings if a final or non-final rapid decision may be expected from the EPO. Art. 33(10) UPCA and R. 295(a) RoP provide that the Court “may” do so. The word “may” means that the Court has a discretionary power. Whether or not a stay is granted depends on the balance of interests of the parties and the specific circumstances of the case, such as the stage of the opposition proceedings, the stage of the infringement proceedings and the likelihood that the patent will be revoked in the opposition proceedings. In this context, the fact that the expected EPO decision is not a final decision and is likely to be appealed is just
one of several factors that may be taken into account.
Rapid decision by the opposition division expected
“It follows that the Court of First Instance erred in refusing to grant the requested stay solely on the basis of its finding that a final decision in the opposition proceedings could not be expected rapidly. The Court of First Instance should have considered whether a rapid decision of the Opposition Division could be expected and, if so, whether the relevant circumstances of the case and the balance of the interests of the parties justified a stay of the infringement proceedings.
“The Court of Appeal will therefore set aside the impugned order.
“It is evident that the requirement for a rapid decision by the EPO is met in this case. It is common ground that the EPO Opposition Division will deliver its decision orally at the conclusion of the oral hearing, one day after the oral hearing in the infringement proceedings.
“The remaining question is whether the Court should exercise its discretion to order a stay of the infringement proceedings in this case, taking into account the interests of the parties and the relevant circumstances of the case. In this context, it is important to emphasize that there are alternative ways to prevent conflicting decisions without ordering a stay at this stage of the infringement proceedings. For instance, the Court may proceed with the infringement proceedings, including preparations for the oral hearing, and reschedule the oral hearing to take place after the EPO’s decision or even after the issuance of the grounds for that decision.
“Alternatively, the Court could hold the oral hearing as scheduled, request the parties to inform the Court of the outcome of the opposition proceedings, and then decide on the basis of such information whether further procedural steps are required. A further option is for the Court to proceed with the infringement proceedings and to exercise the powers granted under R. 118.2(b) RoP when issuing its decision on the merits.
“The Court of First Instance has a degree of discretion in this respect. Moreover, the Court of First Instance is at this stage better informed than the Court of Appeal in respect of the relevant aspects of the infringement proceedings and the counterclaims for revocation. The Court of Appeal will therefore refer the case back to the panel of the Court of First Instance that issued the impugned order for further consideration of the request for a stay.”
The entire order can be read here.
