Advanced Bionics v MED-EL Elektromedizinische Geräte (CFI, 26 December 2024)

Dhenne Avocats · 10 October 2026

Our analysis

Summary

By a decision of 26 December 2024, the Paris Central Division (Judge Catallozzi presiding, Judge Zhilova as judge-rapporteur, technically qualified Judge Roselinger) dismissed Advanced Bionics AG’s revocation action and the joined counterclaims for revocation of Advanced Bionics GmbH and Advanced Bionics Sarl, and maintained MED-EL’s EP 4 074 373, on an MRI-safe disc magnet for implants, as amended by Auxiliary Request 0a. Claim 1 as granted added matter, but limiting it to the four implant systems listed in the application saved the patent. Costs were split 70% to the claimants and 30% to the proprietor. The decision matters for practice on three points of method: the order in which auxiliary requests are examined, hearing the inventor, and the court obtaining the basic documents of its own motion.

Facts and procedure

The revocation action was filed on 27 September 2023 (UPC_CFI_338/2023), on the same day as an EPO opposition. Sued for infringement before the Mannheim Local Division (UPC_CFI_410/2023), the Advanced Bionics companies filed a counterclaim for revocation there on 22 March 2024, referred on 10 July 2024 to the Central Division (Art. 33(3)(b) UPCA, Rule 37.2). The two proceedings were joined on 25 October 2024 (Rule 302), the value was set at EUR 5 million and the oral hearing was held on 29 October 2024. The grounds were added matter, insufficiency and lack of inventive step.

The applicable law

The court applied Articles 56, 69, 83, 123(2) and 138(1) EPC and Articles 54, 65 and 76(2) UPCA. On procedure it dealt with Rules 30.2 and 263 (new requests and arguments), Rule 181.1 (capacity as witness or expert) and paragraph 7 of the Preamble to the Rules of Procedure. Proving the facts is in principle for the parties, and the court does not gather evidence of its own motion (paragraph 132).

Question

Is the granted patent, which claims an « implant system » without the list of systems in the application, invalid for added matter, insufficiency or lack of inventive step, and may the court go straight to a valid auxiliary request without ruling on the admissibility of later requests?

Decision

The exhibits filed with the reply and rejoinder were admitted, as they answered the other side’s arguments on common general knowledge and claim construction (paragraphs 18 to 24). The court may depart from the logical order of issues and leave aside the admissibility of requests 0a* and 3a*, which became unnecessary once Auxiliary Request 0a overcame the attacks (paragraphs 32 to 35). The inventor, who may have a direct interest in the outcome, could not be heard as a witness or expert (paragraphs 39 and 40).

On the merits, the feature « rotatable therein » means rotation in the plane of the coil housing, which made the insufficiency objections moot (paragraphs 70 and 74). However, replacing the list in the application (cochlear, middle ear, vestibular and laryngeal pacemaker systems) with the general term « implant system » was an impermissible generalisation (paragraphs 75 to 80), Auxiliary Request 0a, combining claims 1 and 10, cured it (paragraph 84). Starting from Zimmerling, the skilled person would not have arrived at the claimed diametrically magnetised disc magnet, which has significant drawbacks (paragraphs 88, 105 and 110 to 115), the expert’s view on obviousness was disregarded (paragraph 117) and the other combinations failed (paragraphs 119 to 130). Lastly, the court obtained the application as filed and the granted patent itself, as an exception justified by the lack of settled case law and the parties’ implicit consent (paragraphs 131 to 133).

Key points for practice

• The court may decide on the simplest ground and leave aside the admissibility of late auxiliary requests where an earlier request suffices.
• The inventor, although not a party, is excluded as a witness or expert because of a direct interest in the outcome.
• An auxiliary request restoring the exhaustive list of the application as filed can cure a generalisation made at grant.
• Practical point: file the application as filed and the granted patent with the statement of claim, the court obtaining them of its own motion remains exceptional.

Provisions applied

Agreement on a Unified Patent Court

Art. 33(3)(b), Art. 54, Art. 65 and Art. 76(2)

Rules of Procedure

Rules 30.2, 37.2, 44, 177.1, 181.1, 263 and 302

European Patent Convention

Art. 56, 69, 83, 100, 123 and 138

Case law cited

Paris Central Division, Meril Italy v Edwards Lifesciences, 27 February 2024 (UPC_CFI_255/2023), Mannheim Local Division, Panasonic v Guangdong OPPO Mobile Telecomm, 27 June 2024 (UPC_CFI_210/2023), Court of Appeal, 10x Genomics, 26 February 2024 (UPC_CoA_335/2023), Court of Appeal, SES-imagotag v Hanshow, 13 May 2024 (UPC_CoA_1/2024), Court of Appeal, 21 November 2024 (UPC_CoA_456/2024), Paris Local Division, 3 July 2024 (UPC_CFI_230/2023), Munich Central Division, NanoString Europe v President and Fellows of Harvard College, 17 October 2024 (UPC_CFI_252/2023), Düsseldorf Local Division, Seoul Viosys v expert e-Commerce, 10 October 2024 (UPC_CFI_363/2023)

Related decisions

• MED-EL Elektromedizinische Geräte v Advanced Bionics AG, 22 February 2024, order of the Mannheim Local Division in the infringement action.

Prepared by Dhenne Avocats from the official decision, consulted on 10 October 2026. The database is updated every week, on Friday. Only the official text is authoritative.