Glaxosmithkline Biologicals SA v Novartis AG

The discretion to stay national patent proceedings because parallel EPO or foreign proceedings are pending is wide and must secure the balance of justice in the particular circumstances. Parallel proceedings do not create a presumption in favour of a stay. The principal consideration will usually be the time required for each forum to provide commercial certainty about validity. Where the national court can resolve material uncertainty substantially sooner, that consideration will ordinarily weigh strongly against a stay. The court must also consider legitimate commercial interests, possible duplication, inconsistent outcomes, claim amendments, delay and prejudice. A global assessment supported by valid reasons is sufficient.

The claimant sought revocation of the defendant’s UK patent for a process for purifying bacterial polysaccharides. Validity was challenged for lack of novelty and inventive step. Parallel opposition appeal proceedings were pending before the EPO, and revocation proceedings concerning the Belgian equivalent patent were pending in Belgium.

The defendant applied for a 12-month stay, arguing that the parallel proceedings might resolve the dispute, reduce duplication and save substantial costs. The claimant relied on the commercial importance of the UK market and the need for early certainty, particularly in view of a perceived threat of UK infringement proceedings. The central issue was whether the balance of justice required the UK action to be stayed.

1. Application refused. The balance of justice required the UK revocation proceedings to continue. The claimant was awarded the costs of the application, summarily assessed at £40,000.
2. The discretion to stay proceedings where parallel EPO proceedings challenge patent validity is very wide. It must be exercised by reference to all relevant circumstances and to the balance of justice. The EPC and the Patents Act 1977 provide the context, but neither creates an automatic or presumptive stay.
3. Following and applying the guidance in Glaxo Group Ltd v Genentech Inc [2008] FSR 18, the judge treated the time required to obtain meaningful commercial certainty as generally the most significant factor. The UK proceedings were expected to produce a first-instance decision by early 2010, whereas the EPO appeal might not be heard until 2011. A UK decision would therefore materially reduce uncertainty sooner.
4. The claimant had a substantial UK vaccine business, important prospective products and a justifiable concern that the defendant might bring UK infringement proceedings. Those matters gave its resistance to a stay substantial weight. It was unfair for the defendant to seek information capable of supporting UK infringement proceedings while delaying the claimant’s attempt to clear the UK market.
5. Possible duplication, inconsistent decisions, differing claims and the defendant’s greater flexibility to amend claims before the EPO were relevant but insufficient. The EPC system inherently permits parallel national and EPO validity proceedings. The defendant also had an opportunity to advance consistent amendments in the UK action.
6. The claimant’s delay was relevant, but it had reasonable grounds for expecting the EPO opposition proceedings to resolve its commercial concerns. Considering the matters globally, a stay was refused.

First-instance decision of the High Court (Patents Court). The judgment does not state any prior appellate decision in this litigation.