Gide x Regimbeau – Patent Litigation: victory for Meril Italy S.r.l. in the first decision handed down by the Paris Central Division of the UPC following the Preliminary Objection raised by Edwards Lifesciences Corporation

On 4 August 2023, the Italian company Meril Italy S.r.l., represented by Gide x Regimbeau - Patent Litigation, brought one of the first patent revocation actions before the Central Division of the Unified Patent Jurisdiction (UPC) in Paris against patent EP 3 646 825 (EP 825) owned by Edwards Lifesciences Corporation.

In the first decision handed down by the UPC's Central Division, Gide x Regimbeau - Patent Litigation obtained a complete victory on behalf of Meril Italy S.r.l. by having the Preliminary Objection raised by Edwards rejected (Rules 48 and 19 of the UPC's Rules of Procedure).

In this Preliminary Objection, Edwards raised, inter alia, the inadmissibility of the revocation action brought before the Central Division of the UPC on the grounds that the latter would lack jurisdiction pursuant to Article 33(4) of the Agreement on a Unified Patent Jurisdiction (UPCA).

According to Edwards Lifesciences Corporation, Meril Italy S.r.l. would be the "same party" as its Indian parent company, Meril Life Sciences Pvt. Ltd. and its German subsidiary Meril GmbH. An infringement action having been brought on 1 June 2023 by Edwards against these two company before the Munich Local Division of the UPC, the revocation action for againt patent EP 825 should have, in Edwards' view, been brought before that same Division.

By Order of 13 November 2023, the Judge-rapporteur of the Central Division of the UPC dismissed Edwards' Preliminary Objection in its entirety.

In his interpretation of the notion of "same parties", the Judge-rapporteur noted that Meril Italy S.r.l. has a legal personality distinct from those of Meril Life Sciences Pvt. Ltd. and Meril GmbH, and that it could not be considered as their "straw man". The Judge-rapporteur also dismissed the argument according to which there was a risk of contradictory decisions, referring to the numerous rules applicable to the UPC which, in such circumstances, ensure that the proper administration of justice is preserved (e.g. referral of the case to the Paris Central Division, stay of proceedings by the Munich Local Division).

This first decision rendered by the Paris Central Division of the UPC is particularly interesting in that it clarifies the UPC's framework in which it is possible for the validity of the same patent to be challenged by different parties, whether or not these parties are linked by organizational ties or commercial relations.