Is the UPC a reason to expedite English patent actions?

Seeking a quick English decision from the Patents Court, particularly on invalidity, to try to influence later decisions in foreign national courts, has been standard strategy in European patent litigation for many years.

With the advent of the UPC, could the same strategy apply?

Aside from the potential impact on a merits decision, there are two specific scenarios in UPC proceedings where an English decision may be strategically useful: 

• to influence the stay of Local Division infringement action after the Division has assigned revocation to the Central Division (‘bifurcation’), in order to prevent an 'injunction gap'; and
• to persuade a Local Division that a patent is likely invalid in order to prevent the award of a preliminary injunction.

To be useful, however, the English decision would need to be obtained very quickly indeed, which means expediting normal proceedings. Indeed, even before the UPC, expedition of revocation actions has been attempted several times in the Patents Court to try to influence the stay of infringement proceedings in the German Regional Courts. 

The problem faced in those cases, however, is that use in foreign proceedings is not sufficient reason for expedition on its own. 

The same limitation has now been seen in two recent expedition decisions of the Patents Court that were sought to assist in the UPC. First, in Texas Instruments Incorporated v Network System Technologies LLC, Mr Justice Meade recognises that, as is borne out by the UPC decisions, bifurcation is unlikely:

"to seek to use the UK judgment to influence the outcome in the UPC which could adversely affect the UK market … I think is a very weak factor because although it is possible that the UPC proceedings will be bifurcated, in my view, it is really quite unlikely. … I do not think there is a material risk of an injunction gap." 

And, even if there were bifurcation:

"I think it is a very modest factor and could not justify expedition on its own."

But, as the same judge says two months later in Samsung Bioepis UK Ltd v Alexion Pharmaceuticals, Inc, UPC proceedings may be a supporting factor if there are other reasons for the expedition:

“The UPC proceedings are a secondary consideration in my view, both on the facts of this case and as the authorities indicate, but they provide some modest support for my decision.”

In fact, in both of these cases the judge was prepared to grant expedition, at least provisionally, because of other factors*. In particular, there were important commercial reasons relating to the UK market that weighed in favour of the expedition.

The outcome for those seeking expedition of English patent proceedings to assist in the UPC is, therefore: you cannot have it to assist in the UPC alone; but, you can have it if you demonstrate a commercial necessity in the UK at the same – you can potentially help UPC proceedings if you can do the latter or both.

*Note that, in the SEP context, in Panasonic v Xiaomi these considerations have included the ability of the UK court to determine a global licence to bring litigation to an end in other countries.