Coloplast A/S v Salts Healthcare Ltd

In deciding whether to stay UK patent proceedings pending EPO opposition proceedings, the court must apply the IPCom guidance as a broad, fact-sensitive discretion to achieve the balance of justice. A stay is the default where no other factors exist, but it may be refused where earlier national determination would provide commercial or public certainty, assist settlement, or reduce prejudice. The application must not become a mini-trial on validity or infringement. The risk of wasted costs and possible future patent amendments is ordinarily outweighed by commercial factors favouring early resolution. An undertaking to repay damages may mitigate the risk that the patent is later revoked.

Coloplast brought infringement proceedings under the Patents Act 1977 concerning a patent for a comfort layer used in ostomy collecting bags. Salts denied infringement and counterclaimed for revocation on grounds including lack of novelty, obviousness, insufficiency and AgrEvo-type obviousness.

The patent was opposed by Hollister at the EPO, and Salts later intervened. Salts applied for a stay of the UK proceedings until the EPO opposition and anticipated appeal were concluded. The central issue was whether the balance of justice required the national proceedings to await the outcome of the EPO proceedings.

1. The application was dismissed. The court applied the guidance in IPCom GmbH & Co KG v HTC Europe Co Limited and Ors [2013] EWCA Civ 1496. The discretion is very wide and must achieve the balance of justice in the circumstances of the particular case. A stay is the default option if there are no other relevant factors, and the party resisting the stay must show why it should not be granted.
2. The application was not to become a mini-trial. The court had to examine the parties’ assertions critically, but at a relatively high level of generality. The prospects of success on validity or infringement had no role under the IPCom guidance. The court rejected the proposed importation of the American Cyanamid Co (No 1) v Ethicon Ltd [1975] UKHL 1 test, which served a different purpose.
3. The likely earlier conclusion of the UK proceedings, their ability to determine infringement and promote settlement, and the public interest in dispelling uncertainty displaced the default stay. Only the national court could determine UK infringement. Early certainty was particularly important in a competitive market involving patients likely to remain with their initial ostomy product.
4. The alleged irreparable harm from a future injunction was not a reason to stay the proceedings. The question whether an injunction was appropriate could be considered when remedies were addressed. The court agreed with the approach in Fontem Holdings 1 BV and Anor v Ten Motives Limited and Anor [2015] EWHC 2752 (Pat), and noted that an injunction is not automatic, as explained in HTC Corporation v Nokia Corporation (No 2) [2013] EWHC Civ 3778 (Pat).
5. Possible amendments in the EPO did not justify a stay. Amendments could be considered at trial or, if necessary, in relation to remedies or on appeal. The risk of wasted costs was relevant but, consistently with IPCom, was outweighed by commercial factors favouring early resolution.
6. Coloplast was directed to give its undertaking to repay any damages ordered by the court if the EPO subsequently revoked the patent.