The Plaintiff patent holder had obtained judgment, an injunction and damages against the Defendant for patent infringement despite a defence of invalidity based on prior art. The Defendant then acquired information about other instances of prior art of which they had been unaware. They applied successfully for the revocation of the patent, and went on now to seek to establish that their liability for damages under the earlier order should be nil. Parker J rejected the request: ‘I think it is obvious on the face of it, that a judgment for the revocation of a Patent would in effect put an end to the injunction, because the question whether a Patent has been infringed or not is a question to be tried at the date of the alleged infringement, and, if there is no Patent at that date because it was revoked, that would not be an infringement; so that in effect an Order for revocation of a Patent would in every case put an end to the injunction.’
Held: The appeal failed. The Plaintiff’s rights under the previous order had merged in the judgment and could not be set aside except on appeal. Therefore, despite the revocation of the patent which was the basis of the previous order, the Plaintiff was still entitled to the benefit of that order as regards damages. The fact that the patent had been held valid in the previous proceedings did not prevent the Defendant from arguing that it was invalid in the revocation proceedings.
Judges:
Vaughan Williams, Fletcher Moulton and Buckley LJJ
Citations:
[1908] 2 Ch 430
Jurisdiction:
England and Wales
Cited by:
Cited – Special Effects Ltd v L’Oreal Sa and Another CA 12-Jan-2007
The defendants had opposed the grant of the trade mark which they were now accused of infringing. The claimants said that having failed at the opposition stage, they were now estopped from challenging the validity of the mark.
Held: It was not . .
Mistaken – Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd SC 3-Jul-2013
Virgin Atlantic Airways Ltd sought to recover damages exceeding 49,000,000 pounds for the infringement of a European Patent which did not exist in the form said to have been infringed. The Technical Board of Appeal of the European Patent Office had . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property
Updated: 01 May 2022; Ref: scu.247698