UPC_CFI_315/2024; 571/2024 – Labrador v Biomerieux
- Court
- Local Division Düsseldorf
- Date
- Outcome
- Granted
- Sector
- Other
- Decision Type
- PROCEDURAL
Expert Commentary
Bifurcation Order by the panel 1. The panel decides early (before the end of the written proceedings) to bifurcate and proceed with the infringement action. 2. As there is already a revocation action pending in the Central Division in Milan, the claimant requested that the counterclaim for revocation be sent to the Central Division in Milan. The defendant did not object. The Court does not see strong counterarguments to refuse. Comment 1. If revocation proceedings are already pending, the decision seems logical as it avoids conflicting judgments and saves the parties and the Court considerable time. 2. I trust that Milan and Düsseldorf will coordinate to ensure the Milan decision is known before the oral argument in Düsseldorf. This is possible, especially if the Milan Division ensures the interim procedure is short, planning the interim conference shortly after the closure of the written proceedings, which can occur immediately after the last statement. Early planning of the interim conference and the date for the oral argument is essential so that all judges are available. 3. All that is not only my wish but also a duty of the JR in Milan (see R. 40 RoP sub b). This avoids the undesirable old national German procedure with infringement judgments rendered without a decision on invalidity. However, Düsseldorf should issue a decision within 12-14 months.
Full Decision Text
1 Düsseldorf Local Division UPC_CFI_315/2024 UPC_CFI_571/2024 Procedural Order of the Court of First Instance of the Unified Patent Court issued on 23 April 2025 concerning EP 3 756 767 B1 CLAIMANT: Labrador Diagnostics LLC, represented by its Managers William Chan, Jonathan James, Erez Levy and Ami Patel Shah, 701 S. Carson Street, Suite 200, Carson City, 89701 Nevada, USA represented by: Christof Höhne and all other UPC Representatives of EIP Eu- rope LLP including, in particular, Sebastian Fuchs, Matthew Blaseby, Darren Smyth (Breite Straße 29-31, 40213 Düssel- dorf, Germany and Fairfax House, 15 Fulwood Place, WC1V 6HU, London, United Kingdom), electronic address for service: chohne@eip.com DEFENDANTS: 1. bioMérieux SA, represented by its President and CEO Alexandre Mérieux,376 Chemin de l’Orme, 69280 Marcy l’Etoile, France 2. bioMérieux Deutschland GmbH, represented by its Managing Director Alexandre Schneider, Weberstraße 8, 72622 Nürtingen, Germany 3. bioMérieux Italia S.p.A., represented by its Directors Renato Porta, Efstathios Chorianopou- los, Alain Mérieux and Yasha Mirotti Ventura, Via di Campigliano 58, Ponte a Ema 50012 Bagno a Ripoli (FI) Italy 4. bioMérieux Austria GmbH, represented by its Managing Director Alexandre Schneider and Valérie Sick, Harry-Glück-Platz 2/5, A-1100 Vienna, Austria 5. bioMérieux Portugal, represented by its Managers Maria Antónia Ferreira Pica Nascimento, Pedro Hugo Di Rocco, Lapo Giacometti and Eric Marie Pierre Maillet,Lda., Av 25 de Abril de 1974, N°23-3, 2795-197 Linda-a-Velha, Portugal 6. bioMérieux Benelux BV, represented by its Directors Vincent Marciniak and Denis Monnaie, Databankweg 26 NL, 3821 AL Amersfoort, Netherlands represented by: Benjamin Husband and Agathe Michel-de Cazotte, Carpmaels & Ransford LLP, One Southampton Row, London WC1B 5HA, 2 United Kingdom electronic address for service: ben.husband@carpmaels.com (Defendant 1.) #CR_U010328UC@carpmaels.com (Defendants 2. to 6.) PATENT AT ISSUE: European patent n° 3 756 767 B1 PANEL/DIVISION: Panel of the Local Division in Düsseldorf DECIDING JUDGES: This order was issued by Presiding Judge Thomas, legally qualified judge Dr Thom acting as judge- rapporteur, legally qualified judge Bessaud and technically qualified judge Abello. LANGUAGE OF THE PROCEEDINGS: English SUBJECT OF THE PROCEEDINGS: Patent infringement action – R. 37 RoP; Art. 33(3) UPCA (bifurcation) GROUNDS FOR THE ORDER: I. Pursuant to R. 37.2 RoP, the Local Division takes an earlier decision on the question of how to proceed with regard to Art. 33(3) UPCA before the end of the written procedure. 1. If a counterclaim for revocation has been brought in the case of an infringement action, Art. 33(3) UPCA states that the local or regional division concerned shall, after having heard the parties, have the discretion either to: (a) proceed with both the action for infringement and with the counterclaim for revoca- tion and request the President of the Court of First Instance to allocate from the Pool of Judges in accordance with Art. 18(3) a technically qualified judge with qualifications and experience in the field of technology concerned; (b) refer the counterclaim for revocation to the central division and stay or proceed with the action for infringement; or (c) with the agreement of the parties, refer the case to the central division. 2. In the present case, the Local Division exercises its discretion to refer the counterclaim for revoca- tion to the Central Division and to proceed with the infringement action (Art. 33(3)(b) UPCA). While in general there are advantages in having the infringement action and the counterclaim for revocation being heard together by the same panel, the circumstances of this case call for a differ- ent decision. 3 The Claimant has requested referral of the counterclaim for revocation to the Central Division in Milan, where a revocation action is already pending. The Defendants did not object. This means that the case is to be treated in the same way as a unanimous request. Unanimous requests by all parties will be granted unless strong counterarguments require a different decision (UPC_CFI 14/2023 (LD Munich), Order of 2 February 2024 – Amgen v Sanofi; UPC_CFI_468/2024 (LK Düssel- dorf), Order of 4 March 2025 – GlaxoSmithKline v Pfizer). The Panel does not see any such strong counterarguments. On the contrary, a referral of the Counterclaim for revocation seems to be ap- propriate, particularly for reasons of efficiency. For the avoidance of doubt, it should be noted that the panel refers the counterclaim for revoca- tion filed by all counterclaimants to the Central Division. 3. The Local Division further exercises its discretion to proceed with the infringement action pursuant to Art. 33(3)(b) UPCA, R. 37.4 RoP. Where the panel decides to proceed in accordance with Art. 33(3)(b) UPCA, it may stay the in- fringement proceedings pending a final decision in the revocation proceedings and shall stay the infringement proceedings where there is a high likelihood that the relevant claims of the patent will be held to be invalid on any ground by the final decision in the revocation proceedings, R. 37.4 RoP. The Panel is of the opinion that a stay of the proceedings would not be appropriate at this stage. The question of whether there is a high likelihood of invalidity requires a detailed examination, taking into account the entire content of the file. For this reason, given the stage of the proceedings, it does not appear effective to deal with the issue of invalidity at this point in time. However, the Panel reserves the right to reconsider the possibility of staying the infringement pro- ceedings at a later stage (cf UPC_CFI 14/2023 (LD Munich), Order of 2 February 2024 – Sanofi v Amgen). 4. To avoid any doubt, it is clarified that the Application to amend the patent is referred together with the Counterclaim for revocation. ORDER: The Düsseldorf Local Division refers the counterclaim for revocation to the Milan Central Division and proceeds with the infringement action (Art. 33(3)(b) UPCA). DETAILS OF THE ORDER: ORD_19201/2025 referring to ACT_35332/2024 and CC_54045/2024 UPC-Number: UPC_CFI_315/2024 and UPC_CFI_571/2024 Subject of the Proceedings: Patent infringement action and counterclaim for revocation 4 Issued in Düsseldorf on 23 April 2025 NAMES AND SIGNATURES Presiding Judge Thomas Legally qualified judge Dr Thom Legally qualified judge Bessaud Technically qualified judge Abello
Key Holdings
- Bifurcation ordered early in proceedings.
- Counterclaim referred to Central Division Milan where revocation action was already pending.
Tags
- Bifurcation
- Case Management
- Revocation