Why the decision UPC_CFI_497/2024 (CD Milan, BioMérieux v. Labrador) is a worrying decision

After two years, the UPC's track record concerning its decisions has been rather good so far. Although, of course, in each specific case one of the parties will disagree with the decision, the general red lines of decision-making and the depth of reasoning with which the UPC proceeds are generally recognized and, in some cases, even admired.

This makes it all the more striking when a decision is actually handed down that raises questions—and such is the case with UPC_CFI_497/2024 of the Central Division of Milan.

Here the plaintiff had attacked the patent “with all guns”, i.e. “about 50 invalidity attacks, more than 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack, and 6 different starting points for 30 inventive steps attacks”

The court had considered that too much and had asked the plaintiff to limit their arguments – only to receive the reaction that the plaintiff  “requested that the Court indicate which arguments should be retained and which should be discarded.” The court, however, refused to do so and instead “ asked the plaintiff to rank its arguments in order of importance.”

In its decision, the Central Division argued why it was necessary to limit the number of attacks and why it was also competent to do so:

“If the number of arguments proves unmanageable or overly complex for the panel the party that filed them must, if not reduce them, at least arrange the legal pleadings in order of importance and likelihood of success.

Each legal team is therefore called upon to cooperate with the Court by limiting attacks and auxiliary requests, facilitating the Court's work in accordance with the principles of proportionality and fairness set out in the preamble.

However, given the judge's impartiality, it is not the Court's role to indicate which attacks it considers to be the most promising or likely to be successful. Consequently, the Court may ask the party to arrange their legal defence in order of likelihood of success and argue that if the attacks the party considers most promising are unsuccessful, the others will be too.”

Thus in the end, the patent was upheld in amended form.

First, it should be noted that the court's action should be covered by the Convention and the Rules of Procedure. Before the UPC there is no principle of official investigation (the famous “Amtsermittlungsgrundsatz”) as before the EPO or the German Bundespatentgericht. Thus the strategy of filing as many documents until the court gives up – which allegedly had been contributed to a misuse of the German Nullity Actions, at least according to Pagenberg/Stauder/Singer, GRUR Int 2008, 689 – is not an applicable strategy before the UPC.

Of course it can be argued that if you need 50 invalidity attacks for a patent, then this is something like “I write you a long letter because I had no time to file a short one” – but there can be situations where actually the prior art situation is not as straightforward and taking into account the frontloaded approach of proceedings before the UPC you are more or less forced to present all of your arguments right from the beginning. (I haven't researched the case deeply enough to give an opinion on whether or not this was the case here.)

The worrying aspect of this decision is that the court had demanded from the plaintiff, in a quasi-clairvoyant manner, to decide which arguments the court will consider relevant and which it will not – —and then simply ignore the lower-ranked arguments without further discussion.

However, isn’t “Da mihi factum, dabo tibi ius“ (give me the facts and I give you the law) what a court is for? “Da mihi nimis multa facta, dabo non tibi ius” (give me too much facts and I won’t give you the law) is not an old principle of Roman law.

Although efficiency and procedural fairness are, of course, important principles, including for the patent holder, who has to defend himself against all these attacks, there remains a bitter aftertaste here. If you ask me: Do you have a solution? Then I have to confess: I have none. Maybe that is the most worrying part here.