On July 12 2017 the Barcelona Court of Appeal upheld the appeal filed by Sistemas Técnicos de Encofrados, SA (STEN) against a Barcelona Commercial Court Number 4 order of September 2 2015, in which PERI GmbH had successfully opposed the exception of lis pendens (ie, a pending legal action).

Facts

In July 2011 PERI filed an action against STEN for infringement of its patent for a detachable facade scaffold (European Patent 0918.912 (EP'912) and Spanish Patent 2.145.630).

The lawsuit was handed over to Madrid Commercial Court Number 7.

STEN argued non-infringement of EP'912 and invalidity by way of an exception.

After the defence pleading had been filed, STEN found a piece of prior art (US Patent 4,830,144 (US'144)) which showed EP'912's lack of validity more clearly than the prior art used in the proceedings. Given the impossibility of submitting the new prior art in the existing proceedings, in May 2012 STEN filed a patent invalidity action against EP'912 based on US'144 in order to subsequently request the consolidation of both proceedings. The lawsuit was handed over to Madrid Commercial Court Number 1.

By way of an April 18 2013 order, Madrid Commercial Court Number 7 dismissed the request for the consolidation of both proceedings.

In June 2014, after several vicissitudes relating to the functioning of the Madrid commercial courts, STEN opted to cease the invalidity action filed in Madrid in order to bring it before the Barcelona commercial courts.

In its response to the invalidity complaint, PERI's first objection was the lis pendens exception, based on the joint application of Articles 222.2 and 400.1 of the Civil Procedural Act.

Arguments

PERI's main reasoning was that although STEN had claimed that it had been unaware of US'144 until after the deadline for filing its defence pleading in the infringement proceedings, the document's date preceded the proceedings and, therefore, STEN could have known about the document beforehand. Thus, it should have cited the document in the first proceeding and should not have been able to raise a subsequent invalidity action based on that document. In summary, PERI opposed a lis pendens exception based on the principle of preclusion provided for in Article 400.1 of the Civil Procedural Act.

STEN disagreed with PERI's argument and alleged that:

  • although the document's date preceded that of its response in the first proceeding, the document had not been found until a later date;
  • contrary to what PERI maintained, US'144 had been difficult to find, as proven by the fact that it had not been cited during the prosecution of EP'912 before the European Patent Office (including during the opposition filed by a third party against the patent); and
  • a rigid interpretation of Article 400.1 of the Civil Procedural Act is irreconcilable with the right to effective judicial protection.

First-instance decision

By way of a September 2 2015 order, Barcelona Commercial Court Number 4 upheld PERI's objection of lis pendens and disregarded STEN's lawsuit.

Within the term conferred, STEN filed an appeal against said order, reiterating its arguments. PERI opposed the appeal on the same grounds as those submitted at first instance.

Appeal decision

On July 12 2017 the Barcelona Court of Appeal upheld STEN's appeal. The court accepted almost all of STEN's arguments, ruling as follows:

  • The principle of preclusion cannot have absolute effects. The court tried to condense its interpretation of Article 400.1 of the Civil Procedural Act into six paragraphs and did so in a way that precluded the initiation of later proceedings based on facts or legal grounds that could have been alleged in the first proceeding. However, a proceeding cannot always cover all vicissitudes. Thus, when a first proceeding has not exhausted all of the factual or legal possibilities of the case – as in this case, in which an unknown prior art was later discovered – such fact or possibility is not prevented from being discussed in a second proceeding.
  • A rigid and inflexible interpretation of Article 400.1 of the Civil Procedural Act, as intended by PERI, is contrary to the right to effective judicial protection provided for by Article 24 of the Constitution, as it implies the closure of a second proceeding without further investigating the issue at hand.
  • It is possible that STEN had been unable to find the US prior art before the first proceeding, as it was also not found during the prosecution of EP'912 before the European Patent Office.

This decision cannot be appealed. As such, STEN's application for the invalidity of EP'912 will go ahead.

This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.

For further information on this topic please contact Ana-Laura Morales at Grau & Angulo by telephone (+34 93 202 34 56) or email (l.morales@ga-ip.com).The Grau & Angulo website can be accessed at www.ga-ip.com.