Laddie J pointed out a number of injustices that could be produced by the making of an Earth Closet order, including: ‘i) Such an order was a disincentive to a defendant to plead his best case, particularly since prior art from all over the world may be used to attack the validity of a patent (whereas only art published in the UK could be relied on when the Earth Closet order was invented);
ii) This disincentive might mean that the court was required to pronounce on the validity of a monopoly on the basis of a second best case. Put bluntly this would be against the public interest;
iii) Earth Closet orders are seen as a gift from heaven by patentees with a weak case which enables them to take the benefit of a costs order when the amendment was not really the cause of the discontinuance. In addition they will have had the commercial benefit of reliance on a monopoly which, with hindsight, can be seen to have been invalid;
iv) There is also a danger that the making of such orders will front load the costs onto defendants who will have to undertake exhaustive searches of prior art at a very early stage in the litigation.’
Judges:
Laddie J
Citations:
[1996] FSR 451
Jurisdiction:
England and Wales
Citing:
Cited – Baird v Moule’s Patent Earth Closet Co Ltd CA 3-Feb-1876
Where a patentee sues for infringement and then discontinues his claim against the alleged infringer and consents to the revocation of his patent, he may yet require the alleged infringer to pay a substantial proportion of his costs if he can show . .
Cited by:
Cited – Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303 Inc CA 8-Nov-2011
The parties had litigated the validity of a patent. . .
Cited – Fresenius Kabi Deutschland Gmbh and Others v Carefusion 303 Inc CA 8-Nov-2011
The parties had litigated the validity of a patent. . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 04 May 2022; Ref: scu.448485