Posted: January 12th, 2021
Corning v. Huawei / Court of Appeals of Barcelona, 16 October 2020, Docket No. 1686/2018 / Effects of a patent limitation at the EPO in appeal Court proceedings
On 16 October 2020, the Court of Appeals of Barcelona issued a ruling exhaustively addressing the effects on national appeal Court proceedings of a patent limitation agreed by the EPO Board of Appeals, hence dealing again with another aspect of the difficulties inherent in the coexistence and parallel processing of legal actions for patent infringement / invalidity and opposition / appeal procedures before the EPO.
In the past we commented in this blog a pioneering ruling from the Court of Appeals of Barcelona, dated 29 May 2019, which, for the very first time in Spanish patent court practice, and interpreting Article 42 of the Spanish Code of Civil Procedure on Contentious-Administrative pre-judicial matters, admitted the Judge’s discretion to put on stay infringement and invalidity patent proceedings, depending on circumstances, where the grant of the disputed patent is still subject to final decision by the EPO. Now, following that suspension of legal proceedings, we witness the continuation of the saga in the patent dispute between CORNING and HUAWEI with the Decision of 16 October 2020 of the Court Appeals of Barcelona, once the EPO Boards of Appeal determined that the patent at stake shall be maintained in amended, limited form, that is, in a different form than that of the version enforced by the patentee in national Court proceedings.
Headnote and summary: Luis Fernández-Novoa, HOYNG ROKH MONEGIER