Damages due but Patent invalid

Coflexip SA & Others v Stolt Offshore MS Limited & Others [2003] EWHC 1892(Pat)

Summary

In June 2003 we reported on the High Court decision in Rockwater Limited v Coflexip SA & Others, in which Coflexip's patent was held to be invalid and an order for damages was made against Stolt. In light of the decision in Rockwater, Stolt applied to stay this damages enquiry pending the Court of Appeal hearing Coflexip's appeal against invalidity. The application for a stay was refused by Jacob J.

The Issues

First, Stolt argued that the effect of revocation of Coflexip's patent in the Rockwater case was to render the patent void as if it never existed. Accordingly Stolt argued that it would be unfair if it had to pay damages in respect of a non-existent right. Jacob J agreed that the effect of the patent being revoked was that it was "ab initio void". However, he relied upon the case of Poulton v Adjustable Covers & Boiler Block Co. (1908 25 RPC 529) in stating that this did not affect the order for damages. In Poulton it was held that the defendant was estopped from relying on a later finding of invalidity in order to avoid the payment of damages. Jacob J stated that the earlier finding of validity in the Stolt case and the order for payment of damages acted as an absolute bar to Stolt relying on the subsequent Rockwater decision.

Second, the defendants argued that following the House of Lords decision in Johnson v Gore Wood (2002 2 AC 1), the finding in Poulton had been overruled. In the Gore Wood decision it was held that the Court of Appeal had taken "too mechanical an approach" in determining that a party was estopped from bringing a complaint to the court which could have been heard earlier with a related complaint. This is often referred to as "Henderson v Henderson estoppel". However, Jacob J distinguished this from Stolt's position on the basis that the Gore Wood case related only to Henderson v Henderson estoppel whereas the current case concerned cause of action estoppel.

Finally, Stolt argued that the Patents Act 1977 has the same legal effect as Article 35 of the Community Patent Convention. On this basis a revoked patent could only be treated as not "ab initio" void where the decision on infringement has been enforced prior to the...