bioMérieux & Ors v Labrador Diagnostics (UPC_CFI_497/2024)
Decision date:
23 October 2025
Osborne Clarke summary
- bioMérieux UK brought a revocation action in the Milan CD against Labrador's patent claiming an instrument for detecting a biological analyte. Labrador had separately brought infringement proceedings in the Düsseldorf LD against French, German, Italian, Austria, Portuguese and Benelux bioMérieux entities (part of the same group as bioMérieux UK). These bioMérieux entities brought a counterclaim for revocation in the Düsseldorf LD and requested that the counterclaim be consolidated with the revocation action in the Milan CD. Permission to consolidate was given.
- bioMérieux challenged the patent on several grounds and filed a significant number of attacks, in total, filing around 50 invalidity attacks, over 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack and had 6 different starting points for 30 inventive step attacks. Labrador only defended claims 9 and 14 of the patent as granted and filed a main request and 7 auxiliary requests.
- The Milan CLD initially asked bioMérieux to limit its number of arguments. In response, bioMérieux requested that the court indicate which arguments should be retained and which should be discarded. The Milan CD held that in light of the court's impartiality, it is not the court's role to indicate which attacks it considers to be the most promising or which are likely to be successful. As such, the court required bioMérieux to rank its attacks in order of importance and likelihood of success, citing the principles of proportionality and fairness from the preamble of the UPCA. The court stated that if the attacks the party considered most likely to succeed failed, then the other arguments would not succeed either.
- The court found that the patent as granted and the first auxiliary request lacked novelty as the claimed subject matter was directly and unambiguously disclosed in the prior art document known as "Clark". Although the second auxiliary request was found to be novel, it added matter beyond the original application.
- The third auxiliary request was found to be novel over several pieces of prior art (alone and in combination, and in combination with the common general knowledge). It also overcame arguments of lack of clarity, lack of inventive step and insufficiency. As such, the court concluded that claim 1 of the third auxiliary request was valid and, as claim 2 claimed a method corresponding to the instrument claimed in claim 1, claim 2 was also held to be valid.
- The court held that because the revocation case and counterclaim for revocation concerned the same group of parties and the same invalidity attacks against the same patent, the value of the proceedings should be set together at €5,000,000 and, as such, the ceiling of recoverable costs was €600,000, which applied to both the revocation claim and the counterclaim for revocation.
- The parties agreed that the legal costs of the successful party should be borne by the unsuccessful party and the amount of €600,000 was deemed undisputed.
- Labrador requested that the court keep the amount confidential, pursuant to Article 58 UPCA and Rule 262.2 RoP. However, the Milan CD held that the costs of proceedings are not covered by confidentiality unless they are "specifically indicative of the company's financial capacity, its commercial strategy, or the importance of the patent as a corporate asset". Here, the agreement on costs between the parties did not reveal anything about Labrador's financial capacity etc. and therefore the confidentiality request was rejected.
- At the oral hearing the parties clarified that it was up to the court to decide who was the successful party and what success meant. In accordance with Article 69 UPCA and Rule 118.5 RoP, the Milan CD held that Labrador was the most successful party. However, bioMérieux had some success as it initiated the revocation action and counterclaim against the patent as granted and that was not held valid (and neither were Labrador's main request or auxiliary requests 1 and 2), so the court ordered bioMérieux to pay two thirds of the costs (€400,000).
Issue
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