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Patent: Suspension of Infringement Proceedings in the Case of (Future) Nullity Suit

Higher Regional Court of Düsseldorf, order of 22 September 2021, Case No. I-2 W 17/21 – Suspension standard

After the Technical Board of Appeal of the European Patent Office (EPO) upheld the patent in suit and a subsequent nullity suit based on prior art not yet taken into account in the opposition proceedings, the parallel infringement dispute was initially suspended by the Regional Court of Düsseldorf by order of 3 September 2020.

Inresponse to the admissible and valid immediate appeal of the infringement plaintiff, the Higher Regional Court of Düsseldorf repealed the order of the Regional Court to stay the proceedings and referred the case back to the Regional Court for a new decision. For the reasons set out below, the Higher Regional Court concludes that the Regional Court had applied an incorrect standard for a stay of proceedings.

First, the Regional Court and the Higher Regional Court agree that it is within the discretion of the original court whether to stay the proceedings under Section 148 German Code of Civil Procedure. The required priority of the invalidity proceedings against the patent in suit is given; also, the invalidity action filed is admissible under Sec. 81(2) first sentence German Patent Act, because the opposition proceedings before the EPO have not yet been concluded, since the adjustment of the description by the Opposition Division is imminent and none of the parties intend to appeal against this.

However, in view of the maintenance of the patent in suit by the Technical Board of Appeal, a stricter standard of suspension is applicablein principle. According to the Higher Regional Court, if the argumentation in favour of patentability appeared to be justifiable with comprehensible reasons, the infringement court had to follow this assessment. In such cases, there was in principle no room for a stay of the infringement proceedings. Exceptions to this rule were only applicable in very special circumstances. For example, if the maintenance of the patent in suit proved to be evidently wrong from the infringement court’s point of view and, therefore, a correction could be assumed in the subsequent proceedings on the validity of the patent in suit. Another possible exception would be if prior art not previously assessed in the proceedings on the validity of the patent in suit were presented (without a charge of negligence), which leads to the expectation that the patent in suit would be destroyed. 

According to the Higher Regional Court, the latter constellation is conceivable, for example, if a certain prior art is relevant, as a matter of law, only in national invalidity proceedings, but not in European opposition proceedings. For this purpose, the defendant would have to show in which points the European and the national legal situation differ and why, with a view to the subsequent (future) national invalidity proceedings, the relevant prior art could not be found beforehand despite a sufficiently thorough search. If the defendant succeeds in doing so, a stay is exceptionally possible if there is an overwhelming likelihood of success of the invalidity action.

In the present proceedings, however, the Higher Regional Court finds that the Regional Court‘s decision to stay the proceedings was not free of discretionary error. On the one hand, the Regional Court did not make any findings regarding possible negligence in the late submission of the prior art. Secondly, according to the Higher Regional Court, it would have required more detailed explanations from the District Court as to why it considers itself in a position to regard the decision of the Technical Board of Appeal as (evidently) wrong.

The practice-relevant decision in the conflict between frequently parallel opposition, nullity and infringement proceedings shows the different interests of the parties involved and illustrates the increased due diligence requirements of the parties in the preparation and conduct of the proceedings. From the point of view of the defendant in the infringement proceedings, this also applies in particular with regard to prior art searches at the earliest possible stage, i.e. ideally already in the run-up to the opposition proceedings. The renewed decision of the Regional Court, taking into account the observations of the Higher Regional Court, is awaited with interest.

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Dr. Christian Meyer



Certified IP Lawyer

UPC Representative