MED-EL AND ADVANCED BIONICS SETTLE SHORTLY BEFORE MANNHEIM UPC JUDGMENT

Medical device manufacturers MED-EL and Advanced Bionics have settled their dispute over cochlear implants. The settlement comes shortly before the Mannheim local division of the UPC was due to rule on MED-EL’s infringement suit.

The UPC local division in Mannheim had already prepared its ruling by 8 May, with presiding judge Peter Tochtermann keeping it under wraps. Now it will never see the light of day. Plaintiff MED-EL and its opponent Advanced Bionics have reached a settlement to end all ongoing disputes over cochlear implants. MED-EL has confirmed this to JUVE Patent.

The opponents were not only fighting at the UPC, but also at the EPO and in several countries worldwide, including the US, Germany, the Netherlands, and the UK.

Four years down the road

Proceedings initially began in the US state of Delaware, where MED-EL filed actions against Advanced Bionics. However, the defendant then counterclaimed for infringement and brought six patents back at issue against MED-EL in the US.

In Europe the battle kicked off when MED-EL initially sued Advanced Bionics at Mannheim Regional Court for infringement. The dispute centred on the plaintiff’s EP 31 38 605 which protects an MRI-safe disk magnet for implants.

MED-EL later escalated the dispute, involving members of the EP 605 family such as EP 169 and EP 373. Advanced Bionics responded by seeking a declaration of non-infringement and revocation of EP 605 in the Netherlands and the UK. In both countries, the courts originally declared the patent invalid.

However, it was seemingly the Mannheim UPC hearing and the advent of the judgment that brought real movement in the dispute.

Clear signs for a settlement

The Mannheim local division had heard MED-EL’s action for alleged infringement of EP 4 074 373 at the beginning of April and originally scheduled the judgment for 8 May (case ID: UPC_CFI_410/2023).

According to JUVE Patent sources, however, both companies have been in negotiations for weeks now. The court then postponed the ruling until 23 May at the request of the parties. On Friday, MED-EL and Advanced Bionics then asked the court once again to postpone the ruling to 28 May. This suggested that a general agreement had been reached but parties usually need a few more days to negotiate the details.

Most likely, the parties will now withdraw all patent litigation. As a result, the Mannheim local division will not publish its ruling.

Next global dispute settled

EP 373 protects an MRI-safe disk magnet for implants. MED-EL claimed Advanced Bionics’ HiRes™ Ultra 3D Cochlear Implants infringed the patent. In December 2024, the Paris central division rejected Advanced Bionics’ counterclaim for revocation and upheld the patent in amended form (case ID: UPC_CFI_338 /2023 and UPC_CFI_410/2023).

Advanced Bionics and MED-EL, along with Cochlear Corporation, are the three market leaders in cochlear implants. Germany and the UK are the companies’ biggest European markets. The case is hugely significant for Advanced Bionics and the cochlear implant market in general.

Advanced Bionics is a brand of Swiss company Sonova Holding AG, which also owns well-known brands such as Phonak and Sennheiser and most recently generated sales of 3.9 billion Swiss francs. MED-EL, on the other hand, is privately owned and generated sales of €345 million in 2023, according to media reports.

In addition to Tochtermann, the panel in Mannheim also included judge rapporteur Holger Kircher, legally qualified judges András Kupecz and technically qualified judge Kerstin Roselinger.

No one-stop shop

As in other global disputes over medical devices, the opponents relied on numerous law firms, rather than a one-stop-shop.

MED-EL, for example, relied on a mixed team from Boehmert & Boehmert in the German proceedings and at the UPC. Partner Michael Rüberg took the lead. Patent attorneys Andreas Lucke, Dennis Kretschmann and Lars Eggersdorfer, as well as lawyer Michael Lohse, completed the team. Andreas Lucke filed the patents-in-suit at the EPO and the related opposition proceedings.

In the Netherlands MED-EL relied on a team from Simmons & Simmons around partner Bas Berghuis van Woortman. London-based IP boutique Powell Gilbert acted for MED-EL in the UK proceedings, led by partner Peter Damerell. Boston-based firm Sunstein represents MED-EL in the US.

Massive defence

A significantly larger team of lawyers represented Advanced Bionics in the dispute. Miriam Kiefer, partner at Kather Augenstein, led the proceedings in Germany and at the UPC. Peter Kather, Carsten Plaga and Benedikt Walesch were also part of the Kather Augenstein team. Patent attorneys Laura Ramsay from Dehns and Bernhard Thum from Thum IP were also involved in the UPC proceedings.

In the Dutch proceedings Gertjan Kuipers was in the lead on behalf of Advanced Bionics. He began working on the instruction during his time at De Brauw before moving to Hogan Lovells in 2022.

The London office of US firm Kirkland & Ellis acted for Advanced Bionics in the UK case, headed by partner Nicola Dagg. In the US proceedings, Kirkland partner Marc Sernel represents the medical technology company. Sernel’s relationship with Advanced Bionics goes back to 2018. Kirkland is also acting as global coordinating counsel, overseeing the strategy for the multiple parallel proceedings. Like Gertjan Kuipers, the Kirkland team was also involved in the UPC proceedings.

Munich based patent attorney firm Schwan Schroer & Partner represented Advanced Bionics in some of the EPO oppositions against MED-EL’s patents. In other oppositions Dehns partner Laura Ramsay was in the lead.

Information take from Juve Patent https://www.juve-patent.com/cases/med-el-and-advanced-bionics-settle-shortly-before-mannheim-upc-judgment/

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