Summary
A recent Court of Appeal decision demonstrates the importance of
avoiding delays in amending patent claims. Patent litigants should
also ensure that they cover all relevant issues in good time, as
the court will generally refuse to revisit omitted or delayed
matters.
In the case in question, the patent owner, IP Com, had applied to
amend the patent late in proceedings before the High Court, but had
been refused. On appeal to the Court of Appeal, the patent owner
renewed its request to amend the patent even though the patent had
by that stage been invalidated.
The Court of Appeal rejected all the owner's reasons for
re-opening the issue which it considered had been correctly treated
in the lower court, relying on the well-established rule that all
issues related to a dispute should be raised by the parties in the
first instance proceedings.
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Facts
IP Com had brought an infringement action against Nokia for
infringement of two of IP Com's European patents EP(UK)
540808 ("the Synch Patent") and EP(UK)1186189
("the Access Patent"). In the normal way in
patent disputes, the defendant, Nokia, sought in reply to have both
patents invalidated.
At first instance Mr Justice Floyd had held that both patents were
invalid, the decision being based mainly on GSM standards as prior
art. The Federal Patent Court in Germany had also taken the same
view. In the case of the Access Patent, the proprietor, IP Com,
applied to amend the patent shortly before the trial and was
refused on the grounds of procedural unfairness.
On appealing to the Court of Appeal to overturn the invalidity
decision on the Synch Patent IP Com argued that the judge had not
construed the claims correctly and also took the opportunity to
renew its application to amend the Access Patent.
Held
The Court of Appeal rejected IP Com's argument on
construction of the Synch Patent and upheld Floyd's
decision to invalidate.
On the application to amend the Access Patent, IP Com put forward
two sets of amendments: those rejected by Floyd J pre-trial and a
new set of amendments. Nokia had argued the amendments should not
be allowable because they were unclear and still invalid, and, more
importantly, their consideration would be tantamount to a new
trial.
IP Com argued against Nikken v Pioneer Trading [2005] EWCA Civ
906 which stated that post-trial application to amend should
be refused if it entailed a second trial on validity, as this would
be procedurally unfair. It cited that the Johnson v Gore Wood
[2002] 2 AC1 which provided a test for "misuse or
abuse of process" and gave the court discretion to allow
amendments pre- and post-trial.
Jacob LJ rejected IP Com's arguments and cited the rule in
the 1843 case of Henderson v Henderson that a party should not be
allowed to advance in a second proceeding an issue which it should
have advanced at the first. He noted that this rule had been
applied in patent cases. He added that this was not only in the
interest of the parties but also in the public interest and that
the overriding test was one of abuse of process and procedural
fairness. Although there could be exceptions to the general rule,
IP Com had failed to demonstrate that there current facts were
exceptional.
The court also rejected IP Com's submission that the
original application to amend had been made late due to late
availability of expert reports, stating that the findings in the
expert reports should not have been surprising. The patentee should
have had a good idea of the case for revocation.
IP Com also argued that Article 138 of the European Patent
Convention (EPC) had been revised in 2000 to liberalise national
proceedings for patent claim amendments. The court rejected this
and said the EPC changes had been introduced to ensure that all EPC
states had a minimum post-grant amendment procedure in place,
rather than to liberalise the rules, and the principle of
procedural fairness was unaffected by the EPC revision.
The court also rejected IP Com's attempts to gain support
from the EU Enforcement Directive, IP Com's argument being
that the amendment was part and parcel of the patent's
enforcement, Jacob LJ indicating that patent amendment and patent
enforcement are two distinct issues.
Jacob LJ was particularly scathing in his rejection of this appeal,
stating that parties to a court procedure should "put
up in time, or shut up" and characterising IP
Com's application to amend an invalid patent as an abuse of
process.
He noted the trend across Europe to tighten up procedures and force
parties to put their cases fairly and in time for a pre-arranged
hearing.
Commentary
The Court of Appeal was very keen to demonstrate that it expects
parties to bring issues to the court in a timely manner. Except in
exceptional circumstances, it would be procedurally unfair to
re-consider an issue on which judgment had already been
passed.
Patent owners should anticipate the need for amendments to patent
claims and, above all, apply to the court in good time to make the
amendments.
More generally, patent litigants should ensure that they are prompt
to address all the issues, as delays or omissions may be fatal. In
preparation for trial parties need to cover all possible angles, as
they will be denied a second bite at the cherry.
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
Law-Now information is for general purposes and guidance only. The information and opinions expressed in all Law-Now articles are not necessarily comprehensive and do not purport to give professional or legal advice. All Law-Now information relates to circumstances prevailing at the date of its original publication and may not have been updated to reflect subsequent developments.
The original publication date for this article was 23/02/2011.
