Anyone making a patent infringement claim must expect the defendant to challenge the patent in suit, whether with an appeal, if the deadline for doing so has not expired, or with an action for nullity. German law does not provide for a counterclaim for nullity of the patent in infringement proceedings. For this reason, defendants can only introduce the circumstance that the patent claim has been challenged into the infringement proceedings by requesting a suspension of the infringement proceedings until the decision in the opposition or nullity proceedings.
The decision of whether such a suspension will be ordered or not is at the discretion of the infringement court, Sec. 148 German Code of Civil Procedure (Zivilprozessordnung – ZPO).
Since a plaintiff’s patent represents a verified intellectual property right with claims that cannot be enforced for a period of time, the discretionary decision often turns out in favour of the plaintiff, with the consequence that at least the courts of appeal are rather reluctant when it comes to suspension.
It is typically considered a requirement for suspension that the infringement court considers it highly likely that the patent in suit will be revoked or nullified on the basis of the opposition or action for nullity (cf. Kühnen, Handbuch der Patentverletzung [Patent Infringement Manual], 10th edition, E-book, marginal no. 652, with additional notes). If the plaintiff already has a preliminary enforceable judgement in its favour, the “sufficient” likelihood of revocation or nullification of the patent in suit is deemed adequate reason for ordering the suspension (cf. BGH GRUR 2014, p. 1237 et seq., marginal no. 4 – Kurznachrichten).
The issue of whether the revocation or nullification of the patent in suit is to be expected with pre-dominant or sufficient probability did not play a role in the Federal Court of Justice’s new decision dated 5 June 2018.
Furthermore, the heading of Sec. 148 ZPO uses the term “anticipated”, meaning that a suspension is generally ordered only if the decision in the opposition or nullity proceedings against the patent in suit is significant. The decision in the opposition or nullity proceedings is not relevant if the action is to be dismissed on grounds that are unrelated to the validity of the patent, e.g. on account of the plaintiff’s lack of capacity to sue, due to the defendant’s lack of capacity to be sued, or due to the defendant’s prior-use right pursuant to Sec. 12 German Patent Act (Patentgesetz – PatG). A deci-sion in the opposition or nullity proceedings is also not significant if the infringement court is of the opinion that the defendant has not infringed the patent in suit. No suspension occurs in such cases, but the action is dismissed, irrespective of whether the patent in suit is valid or not. Accordingly, a suspension generally occurs only if the infringement court assumes that the patent has been in-fringed (cf. Kühnen, loc. cit., E-book, marginal no. 644 et seq., with additional notes).
In the decision dated 05 June 2018, the Federal Court of Justice did not presume patent infringement, but rather made the issue of patent infringement dependent on how a particular feature is to be interpreted. In this case, the Federal Court of Justice left the interpretation to the Federal Patent Court for the time being, which is also rather unusual because ultimately, the infringement court has to interpret the patent on the issue of patent infringement.
In its decision dated 05 June 2018, the Federal Court of Justice did not state that the previous case law on exercising discretion on suspensions is to be abandoned. For this reason, the previous principles should probably continue to be considered in the suspension decision. Bearing in mind that a suspension seems “appropriate” in order to ensure a uniform interpretation of the patent claim, at least in the appeal proceedings if the plaintiff already has a provisionally enforceable judgement in its favour, the suspension can always ultimately be justified.
