Advanced Bionics Secures UK Victory in Patent Invalidation Battle Against MED-EL Over Cochlear Implant Technology

A significant patent dispute over cochlear implant technology has resulted in a first-instance victory for Advanced Bionics at the High Court of England and Wales. The court found MED-EL Elektromedizinische’s European patent EP 31 38 605 invalid on grounds of obviousness, following Advanced Bionics’ claim seeking non-infringement and revocation of the patent.

Advanced Bionics argued that MED-EL’s patent was obvious in light of prior art known as ‘Zimmerling,’ which details various shapes and designs for cochlear implants aimed at minimizing magnet movement within a patient’s skull during MRI scans. Both the prior art and the contested patent focus on reducing discomfort and risks associated with magnet displacement caused by MRI magnetic fields.

The dispute escalated in July 2021 when Advanced Bionics initiated proceedings in the UK, responding to MED-EL’s infringement actions in other jurisdictions. Notably, MED-EL had sued Advanced Bionics at Mannheim Regional Court in Germany, but due to ongoing opposition proceedings at the European Patent Office (EPO) concerning EP 605, Advanced Bionics also pursued cases in the UK and the Netherlands before the German court could issue a ruling.

Advanced Bionics, MED-EL, and Cochlear Corporation are recognized as the three leading companies in the cochlear implant market. The contested device represents approximately 95% of Advanced Bionics’ UK revenues, highlighting the case’s commercial significance. Germany and the UK remain the company’s largest European markets.

The litigation landscape is complex, with parallel proceedings ongoing in multiple jurisdictions. In the United States, initial actions filed by MED-EL in Delaware were met with counterclaims by Advanced Bionics involving six patents. MED-EL responded by initiating infringement proceedings in Mannheim, which continue alongside disputes in the Netherlands.

In 2021, the EPO opposition division upheld EP 605, but a preliminary decision from the EPO Technical Boards of Appeal indicates a likely reversal, potentially invalidating the patent. EP 605, titled ‘MRI-safe disk magnet for implants,’ concerns the design of magnets that connect the external and internal components of cochlear implants, specifically addressing magnet shape and mobility to prevent patient discomfort during MRI scans.

Traditionally, MRI scanners can cause circular magnets in implants to move within the skull, risking pain or implant removal. The patent dispute centers on innovations allowing the magnet to rotate freely within the skull under MRI influence, mitigating these risks.

Advanced Bionics sought expedited treatment of the UK case to preempt a possible injunction from the Mannheim court. The UK High Court agreed to accelerate the trial, emphasizing that a UK injunction could severely harm Advanced Bionics’ business interests.

Following the judgment, presiding Judge Campbell Forsyth denied MED-EL’s request to appeal within the High Court. MED-EL has announced plans to appeal directly to the Court of Appeal. The court also ordered MED-EL to cover Advanced Bionics’ legal costs.

The trial was conducted under the Shorter Trials Scheme, which restricts the scope of arguments and limits each party to two expert witnesses, ensuring a streamlined process. This case marked Judge Forsyth’s first appearance as a deputy judge; he previously co-headed Dentons’ European litigation practice before joining Mishcon de Reya’s London IP and patent team.

Advanced Bionics was represented by the London office of Kirkland & Ellis, led by partner Katie Coltart, who also coordinates the global litigation strategy across multiple jurisdictions. In the US, Kirkland partner Marc Sernel represents Advanced Bionics, maintaining a client relationship dating back to 2018.

In Germany, IP boutique Kather Augenstein represents Advanced Bionics, with partners Peter Kather and Miriam Kiefer leading the team. In the Netherlands, the full-service firm De Brauw acts for Advanced Bionics, headed by partner Gertjan Kuipers.

This ruling marks a pivotal moment in the ongoing global patent disputes surrounding cochlear implant technology, with significant implications for market competition and patent enforcement strategies in the medical device sector.