Litigants still to expect stay of patent cases on the merits pending EPO Opposition proceedings
If invalidity is raised in a national patent case on the merits, either in a stand-alone invalidity action, or as a counterclaim for revocation in infringement proceedings, Danish courts will, according to settled case law, as a general rule stay the national action pending the outcome of any EPO Opposition proceedings. The reasonableness of this case law is debated and sometimes challenged, since it may result in lengthy stays of national proceedings which can be burdensome on litigants, in particular if one of the parties have been met with a preliminary injunction and is trying to have the patent revoked in the national action.
However, in a recent case from the Danish Maritime and Commercial High Court (BS-22176/2019-SHR), it was not the alleged infringer but rather the patentholder that challenged the stay of the national proceedings. The patentholder had initially filed an infringement case on the merits, and the alleged infringer had counterclaimed for revocation. Opposition proceedings were pending, and, in accordance with settled case law, the Court stayed the national merits proceedings pending the outcome of the opposition (1. instance decision). The patentholder had opposed the request for a stay.
15 months later, the patentholder filed an application for a preliminary injunction against the alleged infringer, based on the same patent and essentially the same infringement as asserted in the merits case. The Court rejected the application for preliminary injunction due to lack of urgency (periculum in mora), noting that a significantly longer period of time than necessary had elapsed between the initiation of the merits case and the filing of the application for a preliminary injunction.
The patentholder was now in a position where the merits case had been stayed pending the EPO's decision in the first instance and the application for a preliminary injunction had been rejected because of passivity issues. Perhaps in view of those circumstances, the Court observed in its decision to reject the application for a preliminary injunction that it would be willing to reconsider its earlier decision to stay the merits case, if requested to do so.
A motion to cancel the stay was subsequently filed by the patentholder, and on 30 August 2021 the Court ruled that the action should continue to be stayed pending the EPO's decision in the first instance.
Thus, it appears that it is still the general rule in Denmark that a patent case on the merits is stayed pending the outcome of any pending EPO Opposition proceedings. This applies even in a situation as the one described above, where the consequence is that the patent holder is prevented from asserting the patent in Denmark. However, it is likely to have played a role in the Court's assessment of this aspect that the patentholder itself seemed to be the cause of this unfortunate situation by having waited too long with the application for a preliminary injunction.
Kromann Reumert acted for the alleged infringer in the case.
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