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07 Aug 2019

Coloplast A/S v Salts Healthcare Limited, UK Patents Court , 3 July 2019

Coloplast is the proprietor of a patent entitled “comfort layer for a collecting bag” relating to collecting bags (ostomy products for human waste). Coloplast claims their patent is infringed by Salts’ “Confidence BE” range of ostomy bags in the UK – initially launched in November 2017.

Salts denies infringement, and is counterclaiming for revocation of the patent on grounds of lack of novelty, obviousness over four prior art references and two alleged prior uses, insufficiency and AgrEvo-type obviousness. The patent is the subject of opposition proceedings at the EPO, due to be heard in September 2019.

Salts applied to stay the UK infringement proceedings pending a final outcome in the opposition proceedings. David Stone, sitting as a Deputy High Court Judge, dismissed the application.

Deputy Judge David Stone explained the need to “stand back and consider the balance of justice overall” and applied the principles set out by the Court of Appeal (CoA) in IPCom Gmbh & Co KG v HTC Europe Co Limited and Ors [2013] EWCA Civ 1496. He considered the thirteen guidelines set out in IPCom (recasting the guidance in Glaxo) and noted that whilst there is overlap, it is the total guidance he must apply.

In arriving at his judgment to dismiss the application for a stay, Deputy Judge David Stone heard evidence on the timings of EPO and UK proceedings, the alleged impact of a UK decision and the impact of amendments to the patent to be made in the EPO proceedings. He dismissed arguments by Salts in relation to the adverse effect of an injunction noting that these arguments were misplaced in an application for a stay; rather they should be properly made at the time the injunction is requested.

Deputy Judge David Stone considered that Coloplast had demonstrated that there were other factors which meant that the default position of a stay was displaced. Namely:

a) The refusal of a stay would not irrevocably deprive Salts of a benefit of the concurrent jurisdiction of the EPO and the UK courts – Coloplast had offered to undertake to repay any monetary compensation it receives if the patent is subsequently revoked (guideline 7);

b) Some commercial certainty would be achieved at a considerably earlier date in the case of these proceedings (guideline 8). Whilst the parties may not have absolute certainty (or certainty outside the UK) until the EPO proceedings are finally resolved, it is preferable to obtain certainty at least in the UK – one of the largest markets for Coloplast and the largest market for Salts – sooner rather than later;

c) The resolution of these proceedings may, by deciding some important issues (e.g. infringement), promote settlement (guideline 9);

d) The UK proceedings were likely to conclude first. Certainly, if the UK proceedings were stayed and the EPO did not revoke the patent, there would be a considerable delay which would cause significant prejudice to Coloplast. Early determination of the UK proceedings would at least achieve some certainty for the parties (guideline 10).

e) In this case, there was some public interest in dispelling the uncertainty (guideline 11); and

f) Whilst there was a risk of wasted costs if no stay is granted and the EPO eventually revokes the patent, this is outweighed by commercial factors associated with early resolution, as guideline 12 suggests will “normally” be the case.

Deputy Judge David Stone concluded that for these reasons, the balance of justice would best be achieved by refusing a stay. He ordered that Coloplast should now give the undertaking it had offered to repay any damages ordered by the UK court if the EPO subsequently revokes the patent.

A copy of the judgment can be read here.

Headnote: Storm Lindenberg and Will Jensen, Marks & Clerk Law LLP