The English High Court has recently ruled on the appropriateness of staying validity and infringement proceedings pending a Technical Board of Appeal (“TBA”) decision of the European Patent Office (“EPO”), and on using disclosed documents in parallel foreign proceedings.
The parties involved have had a number of skirmishes recently in various courts throughout the world. The facts of their recent UK battle are as follows:
Danisco A/S (“Danisco”) applied to invalidate Novozymes’ patent, EP (UK) 1 804 592, which relates to animal feed pellets containing enzymes to promote digestibility. Although Novozymes does not yet have its product on the UK market, it is hoping to obtain regulatory approval sometime this year. Validity and infringement proceedings were pending between the two parties in a number of countries, for example in Denmark, Germany and The Netherlands. In addition, the Opposition Division of the EPO had held the relevant patent invalid.
The UK trial was originally scheduled for October 2011 but due to the death of an expert witness the trial was rescheduled for March 2012. Danisco requested a further stay of the UK proceedings pending the TBA hearing scheduled for 28 June 2012. Danisco also applied for permission to use certain documents disclosed by Novozymes in parallel foreign proceedings in the UK action. Danisco believed that these documents showed that Novozymes had misled the foreign courts.
As far as the request to stay the proceedings was concerned, Arnold J referred to the guidance previously laid down in Glaxo v Genentech  FSR 18. Arnold J considered all relevant factors including timing, costs and the commercial situation before deciding that a stay was not appropriate in this instance despite the proximity of the TBA hearing. The decisive factors against the award of a stay were:
(1) there had been a delay in applying for the stay;
(2) Novozymes’ commercial objective was to launch its product protected by its patent free from competition and therefore it needed to obtain a final judgment before it received regulatory approval;
(3) Novozymes needed to clear the charge that it had misled the foreign courts; and
(4) Danisco had not offered any undertakings to be bound by the decision of the TBA, nor to stop marketing its product.
Danisco fared no better regarding their plea to use documents disclosed in foreign proceedings. Arnold J found that Danisco had not established the existence of special circumstances justifying use of the documents disclosed in parallel foreign proceedings. The interests of justice were better served by investigating at trial in the UK the allegations that Novozymes had misled the foreign courts.