Patents: Damages for Infringement of Partially Valid Patents

Case Note: Unilin Beheer BV v Berry Floor NV (No. 2) [2005] EWCA Civ 1292 (3 Nov 2005)

The reason why you have not heard from me since Sunday is that I have been doing jury service in Bradford. Consequently, I have had to spend time that I would usually give to this blog on paperwork and urgent correspondence to make sure that I still have a practice when I finish.

As the ancient exemption from jury service of the legal profession was abolished by s.321 of the Criminal Justice Act 2003, which would have been a Home Office Bill at the time that Mr David Blunkett MP was Home Secretary, I was not quite so sorry for him yesterday as I might otherwise have been. However, I may have been unjust to Mr Blunkett because a google search revealed that the proposal to abolish our exemption came from Lord Justice Auld in his Review of the Criminal Courts of England and Wales. Although I have been put to a lot of inconvenience and expense as a result of sitting on this jury I have gained insight into an area of the administration of justice that I would otherwise have ignored. I have to add that the advocacy of the young counsel who represented both sides today was impressive and I was very proud of my profession.

Changing the subject, the Court of Appeal has just delivered judgment in Unilin Beheer BV v Berry Floor NV (No. 2) [2005] EWCA Civ 1292 (3 Nov 2005). This was an appeal from David Young QC sitting as a judge of the Patents County Court. In Unilin Beheer BV v Berry Floor NV (No. 1) [2004] EWCA Civ 1021 (30 July 2004) the Court of Appeal affirmed Judge Fysh QC's judgment that two out of 21 claims of a patent that had been amended before the commencement of proceedings were valid and infringed. Upon an inquiry as to damages following the appeal, the defendants argued that the patentee was not entitled to damages because it had failed to prove that its patent had been framed with reasonable skill and knowledge.

The defendants relied on s.63 (2) of the Patents Act 1977 which provides:
"Where in any such proceedings it is found that a patent is only partially valid, the court or the comptroller shall not grant relief by way of damages, costs or expenses, except where the [plaintiff] claimant or pursuer proves that the specification for the patent was framed in good faith and with reasonable skill and knowledge, and in that event the court or the comptroller may grant relief in respect of that part of the patent which is valid and infringed, subject to the discretion of the court or the comptroller as to costs or expenses and as to the date from which damages should be reckoned."
The deputy judge had rejected their submission and the Court of Appeal upheld him. On the trial on liability, the judge had found that some parts of the specification were redundant and ought to have been removed and that the failure to remove them betokened lack of reasonable skill but those parts were not the parts that had to be amended.

Counsel for the defendants had argued that:
(1) a patentee who has amended his patent should be regarded as the grantee of an indulgence;
(2) if before amendment, he committed the past sin of framing the specification without reasonable skill and knowledge, he must be punished for that sin by depriving him of damage; and
(3) this punishment must be visited on him even though the fact that the patent needed amendment was not his fault.
Lord Justice Jacob rejected that submission as "medieval". He added, however, that on any view any absence of skill and knowledge was irrelevant because the passages criticized by the judge did not relate to claims that had been found to be valid and infringed.

Referring to Codex v Racal-Milgo [1983] RPC 369 his lordship noted that s.63 (2) did not apply to accounts of profits. He queried whether the section was compatible with the Enforcement Directive (Directive 2004/48/EC of the European Parliament and of the Council on the enforcement of intellectual property rights). In his view, it was "probably time these provisions were reconsidered."


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