UK: Rockwater Limited v Coflexip S.A., Technip Offshore UK limited (Formerly Coflexip Stena Offshore Limited) ("Coflexip")

Where a court of superior jurisdiction has held a patent to be valid, under what circumstances can a lower court in separate proceedings reverse that decision?

Terrell On The Law of Patents states "Where there has been a previous decision upon the validity of a patent by a court of co-ordinate or superior jurisdiction, which by reason of having been given in proceedings between different parties does not operate as an estoppel, strong additional evidence will be required in order to reverse the previous finding…."

This case concerned EP (UK) 0 478 742 entitled "Device and Process for Unrolling Flexible Tubular Conduits Essentially Vertically" ("the Patent"). It was litigated previously in the UK when Coflexip sued Stolt Comex Seaway MS Limited ("Stolt") in respect of Stolt’s pipelaying ship the Seaway Falcon. Stolt attacked the validity of the Patent relying largely on allegations of obviousness based upon the prior use and disclosure of another pipelaying vessel called Apache. In January 1999 Laddie J held that the Patent was valid and infringed by Colt. That decision was upheld by the Court of Appeal in July 2000.

Rockwater Limited ("Rockwater") then brought a fresh action for revocation of the Patent. Coflexip counterclaimed for infringement by Rockwater’s ship the Toisa Perseus.

Although both actions concerned the same Patent (and were before the same judge), in April this year Laddie J made different findings on validity and infringement in the Rockwater action than in the Stolt action. He said:

"Whatever the outcome of the proceedings against Stolt, this is a different action which must be determined on the basis of the evidence relied on here. It should be noted that the alleged infringement relates to a vessel which is by no means to the same design as Stolt’s Seaway Falcon. Furthermore, although allegations of anticipation and obviousness are raised here, the prior art relied on is quite different to that relied on in the previous action."

He went on to hold the Patent invalid and not infringed, therefore reversing his own and the Court of Appeal’s previous finding of validity. It appears that Laddie J must have found the "strong additional evidence" needed to justify his decision in the prior art relied on by Rockwater, namely the Recalde US and Recalde GB patents which were not referred to at all in the Stolt action.

The question now is what Stolt will do about the injunction not to infringe Coflexip’s patent, which currently binds it, as well as the enquiry into Coflexip’s damages (which has yet to take place). We would be interested to hear of any other modern cases in any jurisdiction where a lower court has reversed the decision of a superior court on the issue of patent validity, and how the fall-out from reversing such decisions has been dealt with.

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