Case Analysis: Vodafone Group PLC And Ors v IPCom GmbH

• Published date: 15 February 2023
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Dehns
• Author: Mr Paul Harris

Implication of EPO decision on prior English court decision

Summary

Although rare, a problem arises when an English court finds a EP(UK) valid and infringed only for the EPO to find it invalid, or the claim set amended taking the infringement outside the scope of protection. This was the situation faced by Vodafone (Vodafone Group PLC and ors v IPCom GmbH & Co KG [2023] EWCA Civ 113).

The problem is particularly acute where the EPO's decision occurs some considerable time later, and the English court may well have reached a decision on the enquiry as to damages. Costs at the liability stage will have been paid, often very large sums, and an order awarding millions of pounds in damages handed down. As a decision of the EPO has retrospective effect, the revocation of the patent ab initio leads to an apparent injustice having been perpetrated.

Yet there are already approaches that can be put in place by the parties and the court to avoid such injustice arising. This decision sets out why and how.

Case background

IPCom was the proprietor of EP(UK) 2579666 ('666 - due to expire in February 2020) concerning telecoms. The dispute concerned essentiality and FRAND licensing. At the time English proceedings were instituted, opposition proceedings before the EPO had commenced. IPCom applied to expedite the English proceedings, which Vodafone resisted initially seeking a stay because of the EPO proceedings, but that was not pursued, and expedition was ordered.

In September 2019, the Opposition Division upheld an amended form of '666. Vodafone appealed to the Technical Board of Appeal. In November 2019, Vodafone modified its network, so that it did not infringe '666. Following trial in the English Court, a decision of valid, and infringed but for a Crown use defence, was handed down. At the consequences hearing, the judge ordered an enquiry as to damages, and that Vodafone pay 60% of IPCom's costs. Permission to appeal was granted.

In September 2020, Vodafone requested the appeal be adjourned pending the outcome of the TBA's decision. IPCom refused, but no application to adjourn was made. The appeal took place in January 2021, and judgement given in February 2021. Vodafone's validity appeal was dismissed, as was ICom's on claim interpretation, but the latter's appeal against the Crown use defence succeeded. The Court of Appeal made an Order that Vodafone pay a further 12% of IPCom's first instance costs and 80% for the appeal. In total, Vodafone paid almost '1M in...