04 July 2013

UK Supreme Court overturns patent principle

A Supreme Court ruling in a case involving Virgin Atlantic Airways has overturned a century-old legal principle of patent-holders having a right to damages for infringed patents notwithstanding later amendment to the patent.

By James Barnes

Virgin Atlantic: business class seat squabble

The case, Virgin Atlantic v Zodiac Seats, concerned a patent relating to business class airline seats. Prior to yesterday’s ruling, Virgin had successfully sued Zodiac in the UK High Court for infringement, which was confirmed by the Court of Appeal.


In separate opposition proceedings at the European Patent Office (EPO) the patent was amended to remove the infringed claims, meaning Zodiac no longer infringed Virgin Atlantic’s patent.
Virgin relied on English cases in its claim to the Supreme Court, asserting that when the issues of infringement and validity had been found in a patentee's favour, it was entitled to damages despite any subsequent amendment or revocation of the patent.
However the Supreme Court disagreed and found that the amendment of the patent in the EPO proceedings to remove the infringed claims was a factor which Zodiac could rely upon when damages were assessed.

Invalid patent

The Supreme Court also looked into the earlier cases – which began with a Court of Appeal decision in 1908 – and considered them to be decided in error.
According to intellectual property law firm Marks & Clerk, the Court was troubled by the concept inherent in the earlier cases that a patentee might recover damages based on an invalid patent by luck of the timing of various proceedings.

Parallel proceedings

Mark Kenrick, patent specialist and partner at Marks & Clerk, commented: ‘This case shows, again, the difficulties in getting the interactions between UK and European Patent Office proceedings to work in a sensible way.
‘This shows the need for technology-led businesses to consider carefully the interactions between parallel proceedings in the EPO and UK courts, when devising an overall strategy to address a particular patent dispute.
‘While the forthcoming Unified Patent Court will have pan-EU jurisdiction for patent validity, it will not, it seems, provide a solution to the recurring problem of how to deal with parallel proceedings in the EPO and the courts charged with patent enforcement. The draft Rules of Procedure for the proposed court do provide for stays of proceedings based upon proceedings in the EPO, but as with many aspects of the UPC, much will depend upon how the rules are actually applied in practice.'

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