Please pay attention to the gap – shipping of the patent trials and the German injunction gap


Justice Mellor delivered two judgments on requests for expedited trials, each with a different outcome

In a duo of judgments handed down in August 2021, Judge Mellor was called upon to rule on two requests for expedited trials. With such increasingly frequent patent court claims, the rulings provide a good insight into the relevant factors the court will consider when faced with such claims and how two claims, apparently concerning the same issue, can be decided in very different ways. .

Legal principles

In both cases, the legal principles to be applied to the requests presented were not in dispute.

In Gore vs. Geox[1] the Court of Appeal established four factors to be taken into consideration when a request for expediency is made. To know;

  1. If the applicant has demonstrated good reasons for the shipment;
  2. Whether the expedition would be detrimental to the proper administration of justice;
  3. Whether the shipment would cause injury to the other party; and
  4. If there are other particular factors to consider, for example the conduct of the parties.

There has been a broader discussion of these factors in other cases as well, but the essence of the above points is maintained today and the court makes decisions that allow expedition in cases of real emergency.

The two cases brought before Judge Mellor concerned the question of the alleged lacuna in the German injunction. This may result from the bifurcated system in Germany where the infringement and validity of patents are determined separately and because the validity procedure cannot be initiated in Germany as long as an opposition procedure at the EPO (including appeals ) is not completed or the objection window is not closed without objections having been filed. The case of Nicoventures Trading Limited v. Philip Morris & or[2]. In that case, Judge Birss (as he then stood) held that while the void of the German injunction is a factor to be taken into account in requests for shipment, it will never be sufficient on its own to justify qu such request be accepted.

Abbott Laboratories v Dexcom Incorporated[3]

In the first of two cases before Judge Mellor, Abbott sought expeditious dispatch in his action for invalidity of four of Dexcom’s patents. One of the main reasons for the expedition was to try to obtain a judgment from the Patent Court in order to influence the German courts, which were considering infringement of the same patents. Dexcom’s patents had only recently been granted and were still within the 9-month EPO opposition window. A German invalidity action could therefore not be brought and in order to seek the suspension of any injunction that might be granted in the context of the infringement proceedings in Germany, Abbott would have to file oppositions against the patents. Considering the EPO’s procedural delays, it was estimated that this could mean an EPO decision (if expedited) within 13 months of the notice of opposition. Given the timing of German infringement actions, this could mean (in the absence of any stay of injunction in Germany) that Abbott could be injunctive of several months to more than a year depending on the closing dates of the windows. opposition on each of the four patents.

In reviewing the facts of the case, Justice Mellor recognized that the void of the injunction could in theory produce very unfair results for Abbott. However, he also admitted that Abbott was claiming infringement of his own patents in Germany (and the UK) by Dexcom, some of which suffer from the same potential lack of injunction issue, meaning Dexcom could be exposed to the same effects as Abbott. (indeed, if Abbott’s application were to be granted, Dexcom noted in its comments that testing of all Abbott and Dexcom patents would have to be expedited to prevent this asymmetry). The judge therefore considered that a “symmetrical solution” was necessary and proposed that the parties undertake not to seek or enforce an injunction in Germany (or elsewhere in Europe, including the United Kingdom) on an EP patent. until the validity date of this patent. EP (however designated) had been reviewed and determined by a court of first instance. Discussions between the parties and the Court ensued but no commitment could be agreed. Ultimately, the court dismissed Abbott’s claim, stating that while the deviation of the German injunction is a factor to be considered in the urgency, it is not important. The asymmetry between the parties, as Dexcom could face its own injunction issue, was a particular factor in the denial of the claim.

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

The contrary decision was made in the second case before Judge Mellor. Advanced Bionics has requested the dispatch of its invalidity suit for one of Med-El’s patents and its request for a declaration of non-infringement. The patent at issue relates to cochlear implants which can help improve hearing loss. The patent was confirmed by the Opposition Division of the EPO and is now subject to appeal to the Technical Board of Appeal. Following the decision of the Opposition Division, Med-El has initiated infringement proceedings in Germany with a hearing date set for January 2022. Given the timing of the various proceedings, Advanced Bionics faces a possible delay. injunction of at least one year (if not longer) even with an accelerated appeal to the EPO.

Advanced Bionics had three reasons for this request for shipment, the first two of which were summed up by Judge Mellor as “a shipment is necessary to prevent AB from suffering serious irreparable damage in the UK market, caused by the market players learning that a German court has 3D device and avoid this device ”. The third reason was not seen as adding much to the arguments. Med-El has undertaken not to seek an interim injunction or to enforce an interim injunction in the UK and not to publish in the UK an injunction obtained in Germany or the result of its infringement action in Germany. . However, evidence has shown that the cochlear implant market, and in particular the market for Advanced Bionics implants, has been going through a turbulent phase due to the COVID-19 pandemic and a product recall. The next 18 months were therefore a critical period for Advanced Bionics to reclaim its market share in the UK and there was real fear that an injunction in Germany would cast doubt on UK audiologists and patients alike. Advanced Bionics. Even with the commitments offered by Med-El, it was considered that news of any injunction could reach the UK and that the effect of this injunction could have real effect in the UK.

Justice Mellor rejected Med-El’s claim that the only reason for the shipment was that Advanced Bionics could get a ruling from the patent court on the validity of the patent, which he hoped would be different from that. of the opposition division of the EPO. The UK effect was therefore a good reason for shipping. Finding that there would be no interference with the administration of justice or injustice towards Med-El to speed up the trial until February (or March) 2022, it was ruled that this trial should be accelerated.


It can be seen that the facts of these two cases are quite different. In the first decision, the issue of the asymmetry associated with the fact that a primary reason for the expedition was to have a patent court decision to submit to the German infringement court was not something the judge considered. as being able to overcome the obstacles set out in case law. However, as Advanced Bionics shows, where there is a real effect in the UK, the court will seek to expedite cases.

It should also be noted from the Abbott / Dexcom case that the tribunal will actively seek a solution that can be acceptable to both parties. The judge’s proposed commitments in this case are a good example of how the court approaches litigation with pragmatism.

Finally, it’s worth mentioning that the Advanced Bionics case is currently part of the Shorter Trials Program (STS), where trials would typically be listed to be heard no later than eight months after CMC. It also only concerns one patent and, given that it is part of the STS, it is estimated to have a trial period of four days. The Abbott / Dexcom case involved 12 patents in total, and Abbott’s request was to dispatch a lawsuit estimated to take eight to nine days. This is a heavy question and, given that speeding up one case may result in the loss of another in the court queue, it is understandable why the Court must carefully consider granting fast shipping. After all, we are British and skipping the line will only be acceptable for a good reason.

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