UPC Confirms Obviousness a Question of Law, and Not Fact

On 26 December, the Paris seat of the Central Division handed down their final decision in the revocation action brought by Advanced Bionics against MED-EL Elektromedizinische’s patent EP4074373.

In arguing each side of inventive step, both parties relied on expert statements to support their arguments regarding that which was comprised in the state of the art at the priority date of the patent. However, a written witness statement of the inventor of the patent was dismissed, on the basis that whilst they may not be a party to the suit, the inventor of the patent could not be considered an independent and objective expert, as required by Rule 181 of the Rules of Procedure.

Meanwhile, a statement from an expert submitted by the claimants was disregarded, after the expert suggested that the claimed invention was obvious over the prior art. The expert suggested that, on seeing the closest prior art, they had been “immediately struck” by the idea that its disclosure could be implemented in the manner described in the patent suit. However, the Panel reminded the parties that “obviousness is not a question of fact but a question of law, hence, it could not be proven by expert and witness evidence”. Further, as the expert was a named inventor on over 100 patents for medical devices, the Panel pointed out that they were a poor stand-in for the skilled person, who notoriously has no inventive imagination or ability for creative thinking.

After finding the patent valid as amended, the Panel issued an additional note the parties, both of whom had relied on the patent as granted and the parent application to substantiate their arguments, but neither of whom had actually submitted these documents into the proceedings. The Panel stated that they had independently retrieved those documents without a request for acquisition by the parties, but noted that in general the Court cannot acquire evidence ex officio, and mused that a more rigorous interpretation of the rules may have resulted in an even more favourable result for the defendant.