Should I Stay Or Should I Go?

One of the particularities of the German double-tracked patent litigation system with infringement judged at a court differing from the court judging validity (Bundespatentgericht) is the synchronization of these procedures.

In theory, both tracks are joined at the BGH acting as the 2nd instance in nullity and – if leave to revision is granted – as the 3rd instance in the infringement procedure. The decision not to grant leave to revision may be appealed in a so-called “Nichtzulassungsbeschwerde” (NZB), which may be based on the grounds of severe violations of the right to be heard or other grounds of fundamental importance. Isolated wrong decisions do usually not count among these grounds.

In a fairly surprising decision with the name “Crimpwerkzeug III” (see english summary here), the BGH found that differences in claim construction between the 2nd instance infringement proceedings and the 2nd instance nullity proceedings may in fact constitute such a ground of fundamental importance provided that the correct interpretation (i.e. that of the BGH) would have led to a differing result in the infringement proceedings. The main argument was that the persistence of and lack of legal remedies against such irreconcilable discrepancies between the two tracks would derogate the public reliance in the German double-tracked legal system as a whole.

As a matter of course, the assessment of the differing claim construction requires that both procedures are completed. As a consequence, it appeared to be mandatory for the BGH to stay the NZB procedure (and delay the legal force of the infringement sentence) until completion of the nullity/invalidity procedure after Crimpwerkzeug III. I presume that this has led to an increasing number of NZB procedures pending at the BGH.

The recent decision “Klimaschrank” has now put limits to the rule that the BGH has to stay the NZB procedure in these cases. The BGH emphasized that the decision to stay the procedure is not mandatory but still at the discretion of the senate and that a late filing of the nullity action (as compared to the filing of the infringement action) may be of some weight in favour of the patentee. In the case at issue, the nullity suit had been lodged eight months after the pronouncement of the infringement decision and only briefly after the publication of Crimpwerkzeug III.

In cases where the nullity action is filed more or less directly in response to the infringement action, it remains the standing advice to lodge a NZB if the district court decides on the infringement without waiting for the nullity procedure as a precautionary measure.