Baxter Healthcare SA & Ors v Bayer Corp & Ors

Whether patent proceedings should be stayed pending opposition proceedings in the European Patent Office is determined by asking whether a stay is in the interests of justice. The court should balance delay, certainty, duplication and costs. The possibility of inconsistent outcomes is ordinarily remote. Potential wasted costs alone do not justify a stay unless they are so disproportionate to the interest protected that refusal would cause injustice. Parallel foreign proceedings with no direct legal effect in the United Kingdom are generally of limited relevance.

Baxter sought declarations of non-infringement and revocation of Bayer’s United Kingdom designation of a European patent concerning intravenously injectable immunoglobulin. Baxter had opposed the patent before the European Patent Office, but the Opposition Board had maintained it unamended and an appeal was pending.

Bayer applied to stay the United Kingdom proceedings pending the EPO appeal and related infringement proceedings in Belgium. The issue was whether, in those circumstances, a stay was in the interests of justice.

1. Application dismissed. The court declined to stay the properly constituted United Kingdom patent proceedings.
2. The correct question was whether a stay was in the interests of justice. The court should identify and balance the relevant circumstances rather than apply an inflexible starting-point rule.
3. The risk of inconsistency between the national court and the EPO was ordinarily remote. If the EPO maintained the patent, national revocation proceedings would ordinarily continue. Potential duplication and wasted costs did not by themselves justify a stay.
4. The Belgian proceedings had no direct legal effect in the United Kingdom and were substantially irrelevant, or relevant only to a very limited extent, because Baxter could move production to the United Kingdom.
5. Where both parties could pay, wasted costs justified a stay only if they were so disproportionate to the interest protected that refusal would amount to an injustice. Earlier certainty about United Kingdom manufacture outweighed the possible waste of costs.
6. Bayer’s undertakings were not taken into account because they addressed production in Belgium, not the materially different possibility of production in the United Kingdom. The stay application was dismissed.