CD Milano provides answers on “How many attacks are too many?” (UPC_CFI_497/2024, UPC_CFI_571/2024)

In this revocation action, the Central Division in Milan had to deal with a significant number of attacks against the patent in suit, namely “about 50 invalidity attacks, more than 12 added matter attacks, 3 novelty attacks, 1 insufficiency attack, and 6 different starting points for 30 inventive step attacks” (cf. Reasons 1.2). 

After requesting the claimant to indicate which attacks they considered most important, with reference to Rule 104 of the RoP, the claimant indicated the attacks they were going to focus on. While the Main Request and the first two Auxiliary Requests were found to be invalid, the claims of Auxiliary Request 3 were considered sufficiently disclosed and involved an inventive step. The attacks selected by the claimant as the most promising were thus not successful (cf. Reasons 1.6). 

The Court then considered that “the attacks not identified by bioMérieux as (most) promising do not warrant further investigation on the merits” (cf. Reasons 1.7 and Headnote). 

The Court reasoned that the number of attacks was “not compatible with the resources available to the Court, which is required to deliver a high-quality decision within a year” (cf. Reasons 7.1). Accordingly, the Court requested the claimant to rank their attacks because “[i]f 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” (cf. Reasons 1.10). It should not be expected that the Court take up the task of selecting the attacks, because “it is not the Court’s role to indicate which attacks it considers to be the most promising or likely to be successful” (cf. Reasons 1.10). 

The remaining attacks were not analyzed, because “if the attacks the party considers most likely to succeed fail, those considered less effective would also fail” (cf. Reasons 7.2). 

The Court also noted that presenting “such a high number of undifferentiated attacks suggests a lack of strategy” (cf. Reasons 7.1). While the Court did not provide general guidance on how many attacks were too many, for the case at hand it considered “that an assessment based on (a maximum of) two different documents to challenge the novelty and three different starting points to argue for non-inventiveness [...] was indeed appropriate” (cf. Reasons 7.3). 

This decision may remind European patent attorneys of the EPO’s view that opposition proceedings are not “a forum in which the appellant (opponent) could freely develop various attacks based on diverse prior art documents in the hope that one of them would succeed” (cf. Case Law of the Boards of Appeal, 11th Edition, I.D.2.1). However, the EPO’s approach of not admitting certain attacks is generally limited to the discussion of inventive step when multiple starting points are proposed (cf. Case Law of the Boards of Appeal, 11th Edition, I.D.3.7.1). This decision suggests that the UPC, on the other hand, might request claimants to limit their whole case to a “manageable number” of attacks, apparently extending this issue to every type of attack including novelty, added matter and sufficiency.