Should I stay or should I go?

In a patent infringement lawsuit, the defendant may not formally object to the validity of the disputed patent. Rather, if the defendant is convinced that the patent is invalid, it must file either an opposition or a nullity action.

The opposition is then decided either by the German or European Patent Office. A nullity action against a German patent or the German part of a European patent—a procedure that is admissible only if an opposition has not been raised or finally decided—must be filed with a special federal court in Munich, the Federal Patent Court (Bundespatentgericht).

The patent infringement courts, which in the German system consist of specialised chambers of judges constituted at a limited number of district courts (above all Düsseldorf and Mannheim), are bound by granted patents, which are administrative acts. These courts are therefore not allowed to question the validity of that administrative act by considering direct objections to validity.

"The Düsseldorf and Mannheim courts will order a stay only if they think the patent is highly unlikely to survive an attack launched on it in its present form."

However, they may decide to stay the infringement proceedings in view of parallel pending opposition or nullity proceedings. The Düsseldorf and Mannheim courts will order a stay only if they think the patent is highly unlikely to survive an attack launched on it in its present form. This reluctance to stay is the direct result of the split in competences between the infringement and patent courts; in principle, the infringement court is bound by the granted patent and so the claims following from it only require a granted patent that is still in force, regardless of a pending attack on its validity.

Sometimes the infringement court sentences the defendant despite a pending nullity action and the patent is later declared void by the Federal Patent Court. In such a situation, German appeals courts regularly stay the appeal proceedings.

However, in this type of case there is an enforceable first instance judgment that may still be enforced despite the stay of proceedings. So a mere stay will not be sufficient to take into account the new situation that the Federal Patent Court has nullified the patent. Therefore, appeals courts such as the Düsseldorf Court of Appeal will suspend the enforcement of the first instance judgment.

In the Short messages (Kurznachrichten) case, decided in September 2014, the Federal Court of Justice expressly condoned that practice. According to the court, an exceptional case of a suspension not being appropriate may only be assumed if there are serious reasons to believe that the decision to nullify the patent, either by the Federal Patent Court or the respective patent office, will not be upheld on appeal. However, it is expressly said that this may be an exceptional case, and the appeals courts will, in most cases, not question the patent court’s expertise in evaluating the validity of a patent.

In Short messages, the Federal Court of Justice extends the practice of suspending the enforcement of judgments following parallel nullification to cases where there is a second instance judgment and the nullification takes places in the third instance (revision). The statute enabling the appeals court to suspend the enforcement of first instance judgments without the need to establish “non-retrievable damage”, however, only refers to judgments “under appeal”.

So the Federal Court of Justice applies this statute by analogy also to second instance judgments against which a revision has been filed. Therefore in all cases where there is an enforceable judgment for patent infringement, the appeals court or Federal Court of Justice is asked to suspend the enforcement, regardless of whether the case is pending in the second or third instance.

Jens Künzel is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de