England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Claim No: HC 12 B 01709 Royal Courts of Justice The Rolls Building, 7 Rolls Buildings, London, EC4A 1NL
		1st April 2014

THE DEPUTY JUDGE:

1. This is an application by the claimant to stay the order for revocation pending the outcome of proceedings brought by the claimant to amend the patent in the European Patent Office. The claimant offered an undertaking to prosecute such proceedings with due diligence and to bring the matter before the court forthwith on the conclusion of such proceedings for further consideration.
2. An application for amendment containing a request for limitation of the granted patent was made centrally in the EPO on 31st March 2014. Mr. Wilson has explained to me that the amendments fall into two categories. The first amendment seeks essentially to combine claim 9 with claim 1. That would be regarded as a deleting amendment. The second set of amendments seeks to introduce new method claims into the patent, which would be regarded as a validating amendment.
3. The claimant relies upon the decision of the Court of Appeal in Samsung v Apple [2014] EWCA Civ 250 where the Court of Appeal adjourned the hearing of an appeal from a UK judgment pending the conclusion of a central amendment application. The Court of Appeal did not decide in Samsung v Apple that it was not abusive to apply for a central limitation whilst prosecuting an appeal against a finding of non- infringement and invalidity in the UK, thereby changing the claims. They merely reserved the decision on that question until the form of the amendment was known.
4. Mr. Wilson draws attention to the fact that that the central amendment application in Samsung v Apple was made following the grant of permission to appeal by the trial judge. In the present case, there is no application for permission to appeal and therefore the judgment of this court, holding that the patent as granted is invalid, is a final judgment.
5. However, Mr. Wilson submits that it would be wrong, as a matter of principle, to restrict the right to make an application for central amendment to cases in which the patentee had decided to get an appeal off the ground. He submits that either the patentee should be entitled to take advantage of the jurisdiction or it should not and it would be artificial and unfair to require, as a precursor, an allegation that there is an arguable error in the reasoning of the trial judge. Such a precondition or precursor would be disruptive to the administration of justice since it would encourage appeals to be pursued purely for the purpose of buying time to make a central amendment.
6. Mr. Purvis, who appears for the defendants, points out that there is no question of debarring the patentee from making a central amendment application. On the contrary, the patentee is entitled to make a central amendment application. The UK court has finally decided that the European patent (UK), which takes effect as a UK patent, is invalid. The question is whether the central amendment application should then serve to validate the European Patent (UK) as well as all other patents in all other States in which the European patent is designated. In any event, if the central amendment application succeeds, it will take effect in the other designated States.
7. The defendants suggest that the key to the reasoning in Samsung v Apple is that there were concurrent proceedings in the UK and the EPO. Kitchin LJ pointed out at paragraph 29 of the judgment that there is no prohibition on the filing of a central amendment application while infringement or revocation proceedings are pending in any designated State or in the period between a first instance judgment and appeal in such proceedings in any designated State. He submits that the reason why the Court of Appeal decision in Samsung v Apple cannot assist the claimant here is because there are not concurrent proceedings in the UK and the EPO. Although proceedings in the EPO have been commenced, proceedings concerning the validity of the patent in the UK have now finally been determined as the claimant does not seek permission to appeal. This, he submits, is a crucial point of departure from the facts of Samsung v Apple and indeed the other authorities cited by the Court of Appeal, which include Virgin v Zodiac [2013] UKSC 46 Palmaz's European Patents (UK) [2000] RPC 17; Eli Lilly & Co v Human Genome Sciences [2010] EWCA Civ 33; and Boston Scientific Scimed Inc v Medinol Ltd (Supreme Court of the Netherlands (First Chamber) Case C07.085HR). In all those cases, an appeal was pending or, in the case of Virgin, the damages issue was pending, and therefore UK proceedings had not finished when the amendment application was made.
8. Given that there is no application for permission to appeal, there is no reason, submits Mr. Purvis, to stay the order for revocation. In Samsung v Apple, the order for revocation had been suspended because of the appeal and Kitchin LJ pointed out at paragraph 43 that given that the order for revocation had been suspended, whilst suspension remains in place, the European patent (UK) continues to subsist and could be amended.
9. In the present case, the defendants submit that the claimant is seeking to use the application for central amendment as a reason for suspending the order when the action is finished and the defendants have made good their case on validity. Furthermore, it is clear that in the present case, claim 9 was not asserted at the trial to be independently valid. The position is that the defendants put in evidence addressing the invalidity of claim 9 in paragraphs 97-100 of Professor Axinte's report. That was not responded to by the claimant. Therefore, submits Mr. Purvis, the claimant had its chance at the trial to contend that claim 9 was valid. Having not taken it, the Henderson v Henderson doctrine applies and it would be abusive now to seek to assert independent validity of that claim (which would be the effect of the proposed deleting amendments). Furthermore, the validating amendments in respect of method claims could have been advanced at trial but were not. There is no warrant now to suspend revocation of the finalised UK proceedings to await the outcome of amendment proceedings.
10. Mr. Purvis also points out that not only might that take a long time, particularly given the possibility of an appeal, but also the defendants might be at risk in respect of future products or indeed modification of existing products if the patent is validated by these amendments.
11. Overall, and weighing all these factors in mind, I consider that this is a completely different case from Apple v Samsung where an adjournment was held to be justified. In the present case, the UK revocation proceedings have finished in that there is a final judgment which is not sought to be appealed. There was no attempt to make these amendments during the course of those proceedings and I do not see that it is justified to await the uncertain outcome of EPO proceedings prior to revoking the patent.

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