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The English High Court has delivered a victory for Advanced Bionics in its multi-jurisdictional patent dispute with Med-El. The Patents Court decision – the first ever handed down by Deputy Judge Campbell Forsyth – goes against the EPO’s Opposition Division by invalidating the Med-EL IP right in question and may help to diminish the knock-on effects of an injunction granted against AB in Germany.

The expedition of proceedings in this case shows why English court actions are seen as a useful strategic tool for parties seeking not to fall into Germany’s ‘injunction gap’, or at least to mitigate its secondary consequences. However, the case also highlights the limits of this approach.

The recent decision relates to an invalidity and declaration of non-infringement action brought by AB regarding Med-El’s European patent (UK) No. 3,138,605. The two parties are both major players in the global cochlear implant market and are embroiled in a cross-border patent dispute in which Med-El accuses AB of infringing its rights. Proceedings are ongoing at the EPO and in Germany, the Netherlands and the US.

AB filed an opposition against the European patent in early 2020. But, though the Opposition Division gave a preliminary opinion that the IP right was invalid for added matter, it held the patent to be valid and not obvious following a hearing in March 2021. AB appealed this in May 2021 (the Technical Board of Appeal will hear the case in September 2022).

AB’s English court action was filed in July 2021 as a response to a German infringement suit launched by Med-El in June last year. The German action left AB facing the prospect of an ‘injunction gap’ – a phenomenon caused by the country’s bifurcation between infringement proceedings (typically concluded within a year) and validity proceedings (which usually take at least two years to produce a decision). If a product is found to infringe a patent in Germany, its owner may have an injunction awarded against it with little prospect of overturning the ban until the validity ruling is handed down at a later stage.

In these circumstances, defendants often seek a speedy invalidity ruling in other EPC countries (such as the UK) to potentially dissuade the German courts from awarding an injunction, or at least to limit the broader loss of market confidence following a German injunction.

The English Patents Court is often asked for proceedings to be expedited for this purpose. It will grant these requests where the four ‘Gore factors’ are satisfied:

The fact of a potential injunction gap is not considered sufficient in itself, as was made clear by the court’s recent decision to turn down an expedition request in Abbott v Dexcom.

In late-August 2021, however, with German infringement proceedings set to occur in February 2022, Mellor J of the English High Court granted AB’s request for its UK trial to be brought forward. This was because he was persuaded that a German injunction could cause irreparable harm to AB’s UK market for its product by damaging market confidence in a crucial period of recovery following the pandemic.

Though he deemed it impossible to hold the trial in December 2021 (AB’s preferred date), Mellor J instructed the hearing to be held in February 2022. He also agreed to AB’s request for the trial to be compressed into four days under the Shorter Trials Scheme, because of the case’s comparative simplicity.

The outcome of the trial has also gone in AB’s favour. At the beginning of this month, Deputy High Court Judge Campbell Forsyth found the patent to be invalid for obviousness, contradicting the EPO’s Opposition Division. It will now be interesting to see whether the Technical Board of Appeal sides with the English court or the lower instance of EPO decision-making.

However, the English court action did not prevent a German injunction, which was awarded to Med-El following an infringement ruling in March this year. So, while the expedited English decision may have assuaged some of the market uncertainties caused by the German injunction, it did not arrive soon enough to have an influence on the German court’s judgment.

Interestingly, Deputy Judge Forsyth comments in his ruling that his post-trial deliberations were prolonged because of the way complex issues were compressed into a four-day trial under the Shorter Trials Scheme. This is unlikely to have made a decisive difference to the judgment’s timing relative to the injunction. Nevertheless, it is worth bearing in mind for parties considering a shortened trial.

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