November 2011
UK patent infringement: a fast UK decision could assist in Germany
Introduction
In the UK, the same court considers patent validity and infringement at the same time. The UK Patents Court is relatively quick and is likely to decide a case within a year.
By contrast, the system in Germany is bifurcated. Any of the twelve regional courts can hear a case for Germany-wide patent infringement. On the other hand, only the Federal Patents Court in Munich can hear a German validity action.
Infringement actions can be heard very quickly in Germany, with the court reaching a decision within a year, and possibly as quickly as five to six months, particularly in the regional courts in Düsseldorf and Mannheim. However, due to the volume of work at the Munich court, invalidity proceedings take around two years.
Forum shopping
During pan-European litigation, alleged infringers often first launch a revocation action in the UK, with the aim of invalidating the UK patent within a year. The Munich Federal Patents Court can find a UK invalidity decision persuasive when it later decides on validity.
However, because the Mannheim or Düsseldorf courts can reach an even faster decision on infringement, commercial damage can already be done by the German court before the UK court decides on either infringement or validity.
An early German infringement decision can be extremely damaging to an alleged infringer. By paying a bond to the court, the patentee can enforce its patent, and seriously harm the alleged infringer’s German business, even though the UK and German courts have not considered if the patent is valid, and even if the infringement decision has been appealed.
However, a new UK decision suggests that the Patents Court is willing to expedite it’s proceedings to produce an infringement and validity decision even before the German court hears the infringement case.
The case
In HTC Europe Co Ltd v. Apple Inc, Apple sued HTC for patent infringement in Munich and Mannheim. HTC responded with an invalidity action in Munich, and a parallel UK revocation action.
However, HTC faced the risk of the German court granting the patentee an injunction for infringement in Germany, which would cause its business considerable damage, if the Mannheim or Munich courts made a decision before the UK court decided on infringement.
Accordingly, HTC applied to the UK court for expedition of the UK action, to obtain an early decision, which could be presented to the German infringement courts.
Apple responded that the desire to use an early UK judgement in German proceedings was not a good enough reason for expedition.
The UK judge disagreed with Apple, and held that the parallel German proceedings were sufficient reason to expedite the UK proceedings.
However, the judge decided that a super-expedited trial (within three months) would put undue pressure on Apple, and so did not allow super-expedition.
Conclusion
When faced with German patent infringement proceedings it has always been a sound tactic for an alleged infringer to file a revocation action against the corresponding UK patent. This new judgement makes the tactic even more useful, because the UK Patents Court seems willing to expedite the UK proceedings. A resulting favourable decision can be of persuasive value at the German infringement court.
This tactic can avoid the problem of a German court preventing an alleged infringer marketing in Germany under an injunction for infringement, even though the courts have not yet considered validity.
Illustration
The following table illustrates the timeline of German nullity and infringement actions, with UK expedited, and non-expedited, trials.
