BARDEHLE PAGENBERG successfully defends patent of iVIS Technologies S.r.l. in opposition appeal proceedings before Boards of Appeal

Press release dated October 29, 2019

iVIS Technologies S.r.l. (iVIS), based in Italy, is one of the world’s leading manufacturers of medical devices for corneal surgery. It has pioneered customized surgical procedures for treating refractive disorders and various corneal diseases to optimize quality of vision and minimize surgical invasiveness.

For one of its early innovations, iVIS was granted the European patent EP 1 428 470 which relates to customized lamellar transplantations of corneal tissue. Such transplantations may be used to restore the vision of patients who suffer from corneal diseases such as keratokonus. A customized layer of the patient’s diseased cornea tailored to patient’s needs is removed and replaced by a healthy layer of a donor cornea.

SCHWIND eye-tech-solutions GmbH (SCHWIND) had challenged the validity of EP 1 428 470 by an opposition at the European Patent Office (EPO). However, independent claim 1 as granted was maintained by the Opposition Division of the EPO by its decision of February 6, 2015.

Subsequent to an appeal by SCHWIND, the maintenance of claim 1 as granted was now confirmed by the Boards of Appeal of the EPO with their decision announced on October 23, 2019 (T 747/15). This decision is appealable only based on exceptional grounds (listed in Art. 112a EPC).

Following the decision of the Opposition Division of the EPO, iVIS had filed a complaint against SCHWIND before the Regional Court of Mannheim in February, asserting the infringement of claim 1 of EP 1 428 470 regarding a combination of the products AMARIS, SIRIUS and PALK-Cam of SCHWIND.

The Regional Court of Mannheim found infringement of claim 1 of EP 1 428 470 in its first instance decision on November 29, 2016 (docket no.: 2 O 44/16). An appeal against this decision is presently pending before the Higher Regional Court of Karlsruhe which is expected to render a decision in early 2020.

iVIS is confident that the Higher Regional Court of Karlsruhe will confirm the first instance decision by the Regional Court of Mannheim in view of the confirmation of the validity of claim 1 of EP 1 428 470.

Representatives of iVIS: BARDEHLE PAGENBERG (Munich)
<link record:employeeinfo:198>Dr. Georg Anetsberger (German and European Patent Attorney, Partner)
<link record:employeeinfo:149>Dr. Hans Wegner (German and European Patent Attorney, Partner)
<link record:employeeinfo:213>Dr. Michael Kobler (Attorney at Law, Partner)

Representatives of SCHWIND: Hofstetter, Schurack & Partner (Munich) and Jones Day
Dr. Alfons Hofstetter (Patent Attorney, Hofstetter, Schurack & Partner)
Gerd Jaekel (Attorney at Law, Jones Day)

Board of Appeal 3.2.02 of the EPO:
Chairman: Eugène Dufrasne
Technical Members: Stephanie Böttcher, David Ceccarelli



Georg Anetsberger
German and European Patent Attorney, Partner*

Georg Anetsberger

Michael Kobler
Attorney-at-Law (Rechtsanwalt), Counsel

Michael Kobler