Patent Litigants, Cover All The Issues And Do So In Good Time!


A recent Court of Appeal decision demonstrates the importance of avoiding delays in amending patent claims. Patent litigants should also ensure that they cover all relevant issues in good time, as the court will generally refuse to revisit omitted or delayed matters. In the case in question, the patent owner, IP Com, had applied to amend the patent late in proceedings before the High Court, but had been refused. On appeal to the Court of Appeal, the patent owner renewed its request to amend the patent even though the patent had by that stage been invalidated. The Court of Appeal rejected all the owner's reasons for re-opening the issue which it considered had been correctly treated in the lower court, relying on the well-established rule that all issues related to a dispute should be raised by the parties in the first instance proceedings.

To view the article in full, please see below:

Full Article


IP Com had brought an infringement action against Nokia for infringement of two of IP Com's European patents EP(UK) 540808 ("the Synch Patent") and EP(UK)1186189 ("the Access Patent"). In the normal way in patent disputes, the defendant, Nokia, sought in reply to have both patents invalidated. At first instance Mr Justice Floyd had held that both patents were invalid, the decision being based mainly on GSM standards as prior art. The Federal Patent Court in Germany had also taken the same view. In the case of the Access Patent, the proprietor, IP Com, applied to amend the patent shortly before the trial and was refused on the grounds of procedural unfairness. On appealing to the Court of Appeal to overturn the invalidity decision on the Synch Patent IP Com argued that the judge had not construed the claims correctly and also took the opportunity to renew its application to amend the Access Patent.


The Court of Appeal rejected IP Com's argument on construction of the Synch Patent and upheld Floyd's decision to invalidate. On the application to amend the Access Patent, IP Com put forward two sets of amendments: those rejected by Floyd J pre-trial and a new set of amendments. Nokia had argued the amendments should not be allowable because they were unclear and still invalid, and, more importantly, their consideration would be tantamount to a new trial. IP Com argued against Nikken v Pioneer Trading [2005] EWCA Civ 906 which stated that post-trial application to amend should be refused if it entailed a second trial on validity, as...

To continue reading

Request your trial

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT