Bifurcation at the Unified Patent Court: Mannheim refers the Revocation Counterclaim to the Central Division

The procedural option of bifurcation, which involves separating issues of patent infringement and validity into distinct proceedings, has always been a subject of considerable debate. A recent order from the Mannheim Local Division of the UPC in the case between MED-EL Elektromedizinische Geräte Gesellschaft m.b.H. and Advanced Bionics offers fresh insights into how bifurcation can be used and managed effectively within the UPC framework.

Background of the Case
MED-EL initiated an infringement action against Advanced Bionics concerning the patent EP4074373. Advanced Bionics responded not only with a defense against the infringement claim but also filed a counterclaim for revocation of the patent, which is a scenario where bifurcation may come into play. Further, Advanced Bionics had previously filed a separate revocation action at the Central Division in Paris, raising almost identical invalidity issues as those in the counterclaim.

The Decision to Refer to the Central Division
The Mannheim Local Division decided to refer the counterclaim for revocation and a related amendment application by MED-EL to the Central Division in Paris. This decision was driven by several factors.

The court noted that handling the revocation counterclaim separately by another division would be less efficient given the advanced stage of the already pending revocation action in Paris. Consolidating these similar matters was seen as a way to avoid duplication of efforts and conflicting decisions. The change from German to English in the proceedings was considered but ultimately seen as manageable.

Article 33(3) of the Unified Patent Court Agreement grants the local divisions discretion in handling such bifurcation scenarios. The Mannheim division exercised this discretion by referring the matter to the Central Division, departing from the general principle that it is often more appropriate for the local division to handle the revocation counterclaim(s) themselves.

Key takeaways

• Strategic Considerations: Parties need to be strategic about where and how they initiate revocation action(s) and/or corresponding counter claim(s). Advanced Bionics's initial choice to file a revocation action in Paris influenced subsequent proceedings significantly.
• Language and Translation Issues: The change from German to English in the proceedings was considered but ultimately seen as manageable. 
• Coordination between Divisions: The referral demonstrates the UPC's flexible framework for managing cases across its different divisions to enhance judicial efficiency and coherence in patent matters.