The second half of 2021 saw a number of applications for patent trials to be expedited – in other words, to get a trial heard sooner than would normally be the case. This, and more particularly securing the injunctions that typically follow a successful outcome, are normally matters that a patent owner is keen to know about at the outset. Particularly with patent litigation, there can be an interplay between proceedings in other jurisdictions, including the European Patent Office (EPO), which can mean a party may wish to speed up (or slow down) litigation in one forum pending the outcome in another.
In the UK, the goal has been to have a period of not more than 12 months to trial from the time proceedings are issued. Even if the average is in fact a little longer, it remains the case that resolution in the UK still is relatively quick when compared to many other jurisdictions. So given this, the answer to the question as to why there has been a spate of applications for expedition is not obvious. No doubt it is a combination of various factors, including the fairly full state of the court lists of cases waiting to be heard, and possible COVID backlog, although as to the latter many cases have been heard satisfactorily through the pandemic, which reflects well on our court system.
The injunction ‘gap’
One reason for such applications to the UK courts which is clear is parties reacting to the so called “injunction gap” that can arise in German patent litigation. This ‘gap’ in time arises between the granting of an injunction by a German regional court, and the hearing as to the validity of the patent in question by the German federal court and arises because of the split nature of patent litigation in Germany. This position can be compounded further by the fact that under German law, a revocation action may not be commenced until opposition at the EPO, including any appeal to the Technical Board of Appeal (TBA), has been determined. It is quite possible that a lot of commercial damage could be inflicted during this ‘gap’, even if the patent is subsequently revoked.
Typically, once an alleged infringer realises he is about to be served with infringement proceedings in a regional court, he might seek to revoke the equivalent EP(UK) before the conclusion of said infringement proceedings with a view to influencing the German court in the event of a UK finding of revocation, or at least hope to put sufficient doubt in the mind of the judge of the regional court, such that an injunction might be avoided.
Three recent decisions
Three recent decisions have been given by one of the recently appointed patents judges, Mellor J, when this issue has been to the fore;
Neurim & anr v Mylan ¹ - expedition granted
Abbott v Dexcom ² - expedition granted
Advanced Bionics v Med-El ³ - expedition granted
What are the principles the court will apply, given that granting expedition will inevitably mean other litigants will have to wait longer to have their case heard?
• The leading case on such principles is Gore & Associates v Geox⁴. Neuberger LJ set out four factors to consider;
- Is there a good reason for expedition?
- Does allowing expedition interfere with the good administration of justice?
- Does expedition cause prejudice to the other party?
- Are there any other “special factors”?
It can be seen that the 2nd to 4th factors are typically balanced against the 1st.
In Nicoventures v Philip Morris⁵ Birss J (as he then was) said the injunction gap was not enough on its own for expedition, and nor is a mere wish for the often cited “commercial certainty”. The “good reason” to justify an order for expedition must be established in evidence, which in practical terms means a well drafted witness statement with supporting exhibits.
How were these factors applied in the three recent Mellor J decisions and what can be learned from them?
In Neurim, the urgency arose because the (divisional) patent in suit had a very short time until expiry. In an earlier action, the parent patent to the divisional was revoked by the TBA, after it had been found valid and infringed in the High Court. Neurim argued Mylan was estopped from arguing infringement and validity issues, they having already been decided in the earlier action. This estoppel argument was the only realistic way in which injunctive relief could have been granted before expiry of the divisional. Expedition was ordered, albeit without any comment on the strength of such estoppel arguments.⁶
In Abbott, Mellor said this about the injunction gap “In spite of the available procedures in Germany… in theory the injunction gap problem in Germany is capable of producing some very unfair results. If a patent is pretty clearly invalid, there is no problem because the infringement court grants a stay. If a patent is weak but no stay is granted (because invalidity is not clear enough) and ultimately is declared invalid, it may suit a competitor to put up the required security. As I understand matters, the security does not amount to a cross-undertaking in damages. The competitor may calculate that he can inflict far more damage on his rival through an injunction than the value of the security he will lose. Whether such unfairness can occur in practice lies in the hands of the German courts, who I am sure are aware of the scourge of weak patents which turn out to be invalid when scrutinised.”
The above mentioned “available procedures” following a regional court finding of infringement include requesting a stay of the injunction pending Opposition or Federal Court decision and asking the Patentee to put up security, in a manner similar to the cross undertaking in damages required in the UK. However, it is important to note that this security is not as wide ranging and comprehensive as the cross undertaking, so it may well suit a claimant to put up such security as the commercial advantage may be greater. Reform of German law in this respect is pending. However, notwithstanding these observations, the judge went on to say “This brings me back to the point made consistently in the caselaw - a desire to schedule a UK action in such a way that the outcome relating to validity is likely to be available and public before the German infringement court decides the matter is a factor to be taken into account but is not a strong factor and cannot justify expedition on its own… The UK court is not here to police European patents across Europe which may be perceived to be weak and may ultimately be proved to be invalid.” [highlighting added]. Applying the principles, expedition was not granted. Nevertheless, it remains the case that it is entirely legitimate to bring a revocation action in the UK, and it is part of the role of the UK courts to hear such actions – the issue is rather whether such actions should be accelerated in the particular circumstances of each case.
In Advanced Bionics, the injunction gap was again present, but this time expedition was granted. So what was different? The answer lies in the detailed evidence. In Abbott, the judge found Abbott’s primary reasons for expedition were protecting the German market and preventing interference with distribution networks across Europe, whereas Advanced Bionics’ concern was with disruption to the UK market, i.e. a market within the Court’s jurisdiction. Further, in Abbott, expedition would have created an asymmetrical position between the parties, whereas such concern did not arise with Advanced Bionics.
A desire for expedition can often arise in actions where patents are being litigated across multiple jurisdictions – e.g. a finding in one court can prompt an application in another.
The test for whether expedition should be granted is multifactorial, and the quality of evidence submitted is crucial.
A 12 month lead in to trial is already relatively quick, and one needs a (really) good reason to be quicker and jump ahead of other litigants.
The “injunction gap” can lend itself to unfair results, but that is not of itself enough for a successful application.
¹  EWHC 2198
²  EWHC 2246
³  EWHC 2415
⁴  EWCA Civ 622
⁵  EWHC 1594
⁶ In a decision given very recently on the 24 January 2022, the High Court rejected said estoppel arguments.
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Nick helps UK and international clients enforce and protect their Intellectual Property rights, and defends those accused of infringing IPRs.