IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496 (21 November 2013)

IPcom GmbH & Co Kg v HTC Europe Co Ltd & Ors [2013] EWCA Civ 1496 (21 November 2013)

The Court of Appeal held that the Glaxo guidance on stays requires revision in light of the Supreme Court's decision in Virgin. The default position is that a stay should be granted where there are concurrent EPO opposition proceedings, unless the party resisting the stay can show why it should not be granted. The discretion remains wide, and the balance of justice must be assessed in each case, considering factors such as delay, prejudice, commercial certainty, risk of inconsistent decisions, and wasted costs. The revised guidance was set out in detail in the judgment.

Citation
[2013] EWCA Civ 1496
Parties
Claimant/respondent: IPCOM GMBH & CO KG; Defendant/appellant: HTC EUROPE CO LIMITED; Defendant/appellant: BRIGHTPOINT GREAT BRITAIN LIMITED; Defendant/appellant: HTC CORPORATION
Jurisdiction
England and Wales
Judgment Date
21 November 2013
Procedural Posture
Patent Infringement and Revocation Proceedings / Appeal From High Court (patents Court) to Court of Appeal
Outcome
Appeal dismissed
Legal Topics
Stay of Proceedings, Patent Infringement, Patent Revocation, Concurrent EPO Opposition, Discretion to Stay, FRAND Licensing, Case Management
Intellectual Property Patents Stay of Proceedings Patent Infringement Patent Revocation Concurrent EPO Opposition Discretion to Stay FRAND Licensing +1 more

Case Brief

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Parties

IPCOM GMBH & CO KG

Claimant/respondent

HTC EUROPE CO LIMITED

Defendant/appellant

BRIGHTPOINT GREAT BRITAIN LIMITED

Defendant/appellant

HTC CORPORATION

Defendant/appellant

Procedural Posture

Patent Infringement and Revocation Proceedings / Appeal From High Court (patents Court) to Court of Appeal

Legal Issues

  1. 1 Whether the Patents Court should grant a stay of national proceedings pending the outcome of EPO opposition proceedings
  2. 2 Whether the Glaxo guidance on stays requires revision in light of the Supreme Court's decision in Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd

Ratio Decidendi

The Court of Appeal held that the Glaxo guidance on stays requires revision in light of the Supreme Court's decision in Virgin. The default position is that a stay should be granted where there are concurrent EPO opposition proceedings, unless the party resisting the stay can show why it should not be granted. The discretion remains wide, and the balance of justice must be assessed in each case, considering factors such as delay, prejudice, commercial certainty, risk of inconsistent decisions, and wasted costs. The revised guidance was set out in detail in the judgment.

Court Disposition

Appeal dismissed

Orders

  • The order of Roth J refusing a stay is upheld.
  • The technical trial in the HTC action will proceed as scheduled.