Less is more: UPC orders claimant to select and rank attacks

In a recent decision from the Milan Central Division of the Unified Patent Court (UPC), the Court maintained EP3756767 in amended form after severely restricting the number of patentability attacks the claimant was allowed to pursue (UPC_CFI_497/2024).

The patent was directed to modular point-of-care diagnostic devices, originally filed by Elizabeth Holmes’ Theranos Inc, now in the name of Labrador Diagnostics. French biotech company bioMérieux sought revocation at the Milan Central Division, while infringement proceedings are also ongoing at the Düsseldorf Local Division (with the oral hearing scheduled for late-November 2025). 

bioMérieux’s submissions against the patent included, according to the Court, “about 50 invalidity attacks, more than 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack, and 6 different starting points for 30 inventive step attacks”.

The Court called this “unmanageable … in accordance with the principles of proportionality and speed” and (in the interim procedure) ordered the claimant to rank its arguments and discard weaker points. Indeed, the Court suggested that “attacks not identified by bioMérieux as (most) promising do not warrant further investigation on the merits because … if the (most) promising attacks, after assessment of the Court, do not affect [validity], the others wouldn’t have done so either”.

Instead, the judges suggested that two documents selected for novelty and three starting points for inventive step were appropriate. The Court remarked that “a high number of undifferentiated attacks suggests a lack of strategy” and stressed that it was not the Court’s role to fix this.

Ultimately, the proprietor’s Main Request and First Auxiliary Request were found to lack novelty, the Second Auxiliary Request was novel but added matter, and the Third Auxiliary Request complied with the EPC. The patent was therefore maintained in amended form.

This decision demonstrates the UPC’s willingness to be prescriptive in enforcing its establishing principles (e.g. proportionality and speed), but some might be concerned that this comes at the expense of quality, given that a significant amount of the claimant’s submissions were put aside without full consideration.