Please mind the gap – expedition of patent trials and the German injunction gap

Mr Justice Mellor gave two judgments in relation to requests expedited trials, each with a different result

21.09.2021

Mind The Gap - Tube

In a duo of judgments in August 2021 Mr Justice Mellor was called upon to decide two requests for expedited trials. With such requests becoming more frequent in the Patents Court the decisions give a good overview of the relevant factors the court will consider when faced with such applications and how two requests, seemingly concerning the same issue, can be decided very differently.

The legal principles

In both cases the legal principles to be applied to the applications made were not in dispute.

In Gore v Geox[1] the Court of Appeal laid down four factors to be considered when an application for expedition is made. Namely;

  1. Whether the applicant has shown good reason for the expedition;
  2. Whether expedition would interfere with the good administration of justice;
  3. Whether expedition would cause prejudice to the other party; and
  4. Whether there are any other special factors to be considered e.g. conduct of the parties.

There was also some wider discussion of these factors in other cases but the essence of the points above stand today and the court makes decisions permitting expedition in cases of real urgency.

Both cases before Mr Justice Mellor concerned the issue of the so-called German injunction gap. This can arise as a result of the bifurcated system in Germany where infringement and validity of patents are determined separately and because validity proceedings cannot be commenced in Germany until any EPO opposition proceedings (including appeals) have concluded or the window for oppositions has closed without any oppositions having been filed. Of particular interest on this issue of the German injunction gap and expedition requests is the case of Nicoventures Trading Limited v Philip Morris & or[2]. In that case Mr Justice Birss (as he then was) considered that while the German injunction gap is a factor to be taken into account in expedition requests, it will never be enough on its own to warrant such a request being granted.

Abbott Laboratories v Dexcom Incorporated[3]

In the first of the two cases before Mr Justice Mellor, Abbott sought expedition in its action for invalidity of four of Dexcom’s patents. One of the primary reasons for the expedition was to try and secure judgment from the Patents Court in order to influence the German courts, who were considering infringement of the same patents. Dexcom’s patents had only recently been granted and were still within the 9 month opposition window at the EPO. A German nullity action could therefore not be filed and in order to request a stay of any injunction which may be awarded in the infringement proceedings in Germany, Abbott would need to file oppositions against the patents. Given the timelines for EPO proceedings, it was estimated that this could mean a decision by the EPO (if expedited) within 13 months of the notice of opposition. Given the timings of the German infringement actions, this could mean (absent any stay of injunction in Germany) that Abbott could be injuncted for several months to over a year depending on the closing dates for the opposition windows on each of the four patents.

In considering the facts of the case Mr Justice Mellor recognised the injunction gap could in theory produce some very unfair results for Abbott. However, he also recognised that Abbott was claiming infringement of its own patents in Germany (and in the UK) by Dexcom, some of which suffer from the same potential issue of the injunction gap, meaning Dexcom could be exposed to the same effects as Abbott (indeed if Abbott’s application was to be granted Dexcom noted in its submissions that the trials of all the Abbott and Dexcom patents should be expedited to prevent this asymmetry). The judge therefore considered a “symmetric solution” was needed and made a proposal that the parties give an undertaking that neither would seek or enforce injunctive relief in Germany (or elsewhere in Europe, including the UK) on any EP patent until after validity of that EP (in whatever designation) had been considered and determined by a first instance court. Discussions between the parties and the Court ensued but no undertaking could be agreed. Ultimately, the Court refused Abbott’s application, stating that while the German injunction gap is a factor to be considered in expedition it is not a strong one. The asymmetry between the parties, in that Dexcom could face its own injunction gap issue, was a special factor in the refusal of the application.

Advanced Bionics AG and Anr v Med-El Elektromedizinische Gerate GmbH[4]

The opposite decision was reached in the second case before Mr Justice Mellor. Advanced Bionics sought expedition of its trial for invalidity of one of Med-El’s patents and its request for a declaration of non-infringement. The patent in issue relates to cochlear implants which can help improve hearing loss. The patent was upheld by the Opposition Division at the EPO and is now subject to an appeal to the Technical Board of Appeal. Subsequent to the decision of the Opposition Division, Med-El brought infringement proceedings in Germany with a hearing date set for January 2022. Given the timing of the different proceedings this leaves Advanced Bionics facing a possible injunction gap of at least a year (if not more) even with an expedited appeal at the EPO.

Advanced Bionics had three reasons for this requested expedition, the first two of these Mr Justice Mellor summarised as “expedition is required to avoid AB suffering possibly severe irreparable damage in the UK market caused by those in the market learning that a German court has injuncted AB’s 3D device and steering clear of that device”. The third reason was not considered to add much to the arguments. Med-El offered undertakings that it would not seek an interim injunction or seek to enforce an interim injunction in the UK and that it would not publicise in the UK any injunction obtained in Germany or the result of its infringement action in Germany. However, the evidence showed that the market for cochlear implants, and particularly that for implants by Advanced Bionics, had gone through a turbulent phase due to the COVID-19pandemic and a product recall. The next 18 months were therefore a critical period for Advanced Bionics to recover their market share in the UK and there was a real fear an injunction in Germany would make audiologists and patients in the UK doubt Advanced Bionics’ product. Even with the undertakings offered by Med-El it was considered the news of any injunction could reach the UK and the effect of that injunction could have a real effect in the UK.

Mr Justice Mellor rejected Med-El’s contention that the only reason for the expedition was so Advanced Bionics could have a decision from the Patents Court on the validity of the patent, which it hoped would be different to that from the EPO opposition division. The effect in the UK was therefore a good reason for expedition. Concluding that there would be no interference with the administration of justice or unfairness to Med-El to expedite the trial to February (or March) 2022 it was held that this trial should be expedited.

Comments

It can be seen that the facts of these two cases are quite different. In the first decision the issue of asymmetry coupled with the fact a primary reason for expedition was to have a decision from the Patents Court to put before the German infringement court was not something which the judge considered could pass the hurdles set down in the case law. However, as shown in Advanced Bionics, where there is a real effect in the UK the court will seek to expedite cases.

It is also of note from the Abbott/Dexcom case that the court will actively seek a solution which may be amenable to both parties. The proposal of undertakings from the judge in this case is a good example of how the court takes a pragmatic approach to disputes.

Finally, it is worth mentioning that the Advanced Bionics case is currently part of the shorter trials scheme (STS), where trials would usually be listed to be heard not more than eight months after the CMC. It also concerns only one patent and, given it is part of the STS, has an estimated trial length of four days. The Abbott/Dexcom case involved 12 patents in total and Abbott’s application sought expedition of a trial with an estimated length of eight to nine days. This is a hefty ask and, given speeding up one case may result in another losing its place in the court queue, one can see why the Court needs to consider the granting of expedition with care. After all, we are British and jumping the queue will only be acceptable for a good reason.

[1] [2008] EWCA 622 at [25]
[2] [2020] EWHC 1594 (Pat)
[3] [2021] EWHC 2246 (Pat)
[4] [2021] EWHC 2415 (Pat)

Katie Cambrook

Author

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