International Patent Litigation - Advanced Bionics v MED-El
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| Author Thomas Woolner Source Wikimedia |
In International Patent Litigation - Abbott Laboratories Ltd v Dexcom Inc. 3 March 2022 I discussed the so-called German "injunction gap" and an application to expedite the trial of a revocation action in England in an attempt to beat it. In Abbott Laboratories Ltd v Dexcom Incorporated [2021] EWHC 2246 (Pat) (6 Aug 2021) the application for expedition was refused. In Advanced Bionics AG and another v MED-El Elektromedizinische Gerate GmbH [2021] EWHC 2415 (Pat) (31 Aug 2021), a similar application to the same judge succeeded.
In my case note on Abbott I wrote:
"In Germany, unlike the United Kingdom, it is not possible to challenge the validity of a patent in infringement proceedings. Alleged infringers who wish to challenge the validity of the patent they are alleged to have infringed must bring opposition proceedings in the European Patent Office under art 99 of the European Patent Convention or start separate revocation proceedings in Germany. If a German court finds that a patent has been infringed it will usually grant an injunction which remains in force unless and until the patent is revoked. The time-lapse between judgment in an infringement action and judgment in opposition in revocation or opposition proceedings is sometimes called 'the injunction gap'"
"In Germany, unlike the United Kingdom, it is not possible to challenge the validity of a patent in infringement proceedings. Alleged infringers who wish to challenge the validity of the patent they are alleged to have infringed must bring opposition proceedings in the European Patent Office under art 99 of the European Patent Convention or start separate revocation proceedings in Germany. If a German court finds that a patent has been infringed it will usually grant an injunction which remains in force unless and until the patent is revoked. The time-lapse between judgment in an infringement action and judgment in opposition in revocation or opposition proceedings is sometimes called 'the injunction gap'"
I added:
"One way of persuading a German court not to injunct an alleged infringer is for that party to produce a finding of a foreign court that the corresponding patent is invalid."
In that case, Mr Justice Mellor noted that expedition of patent action in England to reduce the risk of an injunction in Germany had been considered many times. The most recent occasion in which the issue had arisen had been Nicoventures Trading Limited v Philip Morris and another [2020] EWHC 1594 (Pat) which I had discussed in International Patent Litigation - Nicoventures Trading Ltd v Philip Morris on 16 July 2020. At para [1] of his judgment in Advanced Bionics Mr Justice Mellor said:
"............ the position which the so-called 'injunction gap' creates in Germany is a matter for the German courts. The task for an English Court on an application of this type is to examine the effects that an early injunction in Germany may have on the UK market to the disadvantage of a party who believes the EP is invalid and/or not infringed, and to decide whether those effects justify expedition of a trial in this country."
"One way of persuading a German court not to injunct an alleged infringer is for that party to produce a finding of a foreign court that the corresponding patent is invalid."
In that case, Mr Justice Mellor noted that expedition of patent action in England to reduce the risk of an injunction in Germany had been considered many times. The most recent occasion in which the issue had arisen had been Nicoventures Trading Limited v Philip Morris and another [2020] EWHC 1594 (Pat) which I had discussed in International Patent Litigation - Nicoventures Trading Ltd v Philip Morris on 16 July 2020. At para [1] of his judgment in Advanced Bionics Mr Justice Mellor said:
"............ the position which the so-called 'injunction gap' creates in Germany is a matter for the German courts. The task for an English Court on an application of this type is to examine the effects that an early injunction in Germany may have on the UK market to the disadvantage of a party who believes the EP is invalid and/or not infringed, and to decide whether those effects justify expedition of a trial in this country."
He continued at [2]:
"There may be many cases where the effect of a German injunction on the UK market is slight or even non-existent. Equally, a case may reveal a real risk that a party in the position of AB will suffer real damage in the UK market caused by knowledge that a German court has granted an injunction over their flagship product and the fact that it may be difficult if not impossible to overcome concerns in the UK market as to whether it is safe or prudent to take that party's product for fear that an injunction in the UK may well follow, even if in time that party secures a finding from the English court that the EP(UK) is invalid (and/or not infringed). If such damage is suffered, there is no redress against the patentee, it is truly irreparable damage."
"There may be many cases where the effect of a German injunction on the UK market is slight or even non-existent. Equally, a case may reveal a real risk that a party in the position of AB will suffer real damage in the UK market caused by knowledge that a German court has granted an injunction over their flagship product and the fact that it may be difficult if not impossible to overcome concerns in the UK market as to whether it is safe or prudent to take that party's product for fear that an injunction in the UK may well follow, even if in time that party secures a finding from the English court that the EP(UK) is invalid (and/or not infringed). If such damage is suffered, there is no redress against the patentee, it is truly irreparable damage."
The patent that Advanced Bionics wish to revoke is European patent 3 138 605 B1 for an Mri-safe disk magnet for implants. Med-El applied for the patent on 21 April 2011 claiming priority from an application for a US patent for that invention on 23 April 2010. In 2018 Advanced Bionics launched a Hi Res 3D device which is alleged by Med-El to infringe its US and European patents. Med-El sued Advanced Bionics for infringing the US patent while Advanced Bionics brought opposition proceedings in the European Patent Office under art 99 of the European Patent Convention after the European patent was granted. On 2 June 2021 Med-El sued Advanced Bionics's German subsidiary in the Mannheim Landgericht or district court. The action was expected to come on for trial on 18 Jan 2022 with judgment to be delivered at the end of February.
Advanced Bionics launched proceedings for the revocation of the patent and a declaration of non-infringement on 13 July 2021. On 14 July 2021, it applied for the action to be expedited. Med-El contended that it was a category 4 action requiring 5 to 7 days for a trial which would normally be listed in October 2022.
Mr Justice Mellor referred to the same authorities as in Abbott, namely Gore v Geox [2008] EWCA 622, James Petter v EMC Europe [2015] EWCA Civ 480 and Nicoventures Trading Ltd v Philip Morris and others [2020] EWHC 1594 (Pat). He also referred to his own judgment in Abbott and to Mr Justice Meade's in Teva v Janssen [2021] EWHC 1922 (Pat):
"All of these matters are to be assessed on a sliding scale. There could be a good reason for expedition or a really, really good reason for expedition. There can be a requirement for a modest degree of expedition or there can be a requirement for a lot of expedition. None of these things, therefore, is a binary consideration."
"All of these matters are to be assessed on a sliding scale. There could be a good reason for expedition or a really, really good reason for expedition. There can be a requirement for a modest degree of expedition or there can be a requirement for a lot of expedition. None of these things, therefore, is a binary consideration."
As in Abbott, he directed himself that the application had to be decided in accordance with the following principles:
(1) whether the applicants have shown good reason for expedition; (2) whether expedition would interfere with the good administration of justice;
(3) whether expedition would cause prejudice to the party; and
(4) whether there are any other special factors.
As to the first, he considered that Advanced Bionics could suffer a lot of harm were an injunction to be granted to Med-El in Germany. It would take many months for a revocation action to be tried om Germany. British audiologists would be wary of using Advanced Bionics's Hi Res 3D device during that time in case it was found to infringe here. The only way to allay such fears was to determine validity and infringement in a trial in England. As for the second, the judge considered that the action would be a category 3 matter that could be tried in 4 days by a deputy judge. There would be some queue jumping but none of the listed cases would be affected. Since Med-El was already litigating in Germany it could not claim to be prejudiced by expedition. Neither side persuaded the judge that there were any special factors for or against expedition. He therefore ordered expedition from February 2022.
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