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This article was included in the spring 2011 issue of Innovate - the patents newsletter.
IPCom and Nokia are parties in a multiplicity of patent actions running in the Patents Court in London. A recent decision of the Court of Appeal in favour of Nokia in which IPCom were refused leave to amend their patent illustrates that the timing of applications to amend a patent can be critical.
The relevant timeline was as follows:
| 4 Sep 08 | Nokia commenced proceedings to revoke IPCom's patent citing a number of items of prior art |
| 25 Sep 09 | Nokia serves its expert's first report |
| 19 Oct 09 | Nokia serves its expert's second report |
| 10 Nov 09 | Nokia apply to cite one additional item of prior art in support of its invalidity claim |
| 16 Nov 09 | IPCom file an application to amend the patent "in order to further distinguish the patent from the" new item of prior art |
| 19 Nov 09 | On the first day of trial Nokia withdrew its application to cite the new item of prior art. |
Although the stated cause of IPCom's application to amend the patent was thus removed, IPCom persisted in the application to amend. Nokia objected.
Nokia argued that there could not be a fair trial if it were to proceed on the basis of a few days' notice of an application to amend the patent. As put by Nokia it would alter the target which it would be necessary to shoot at for the purpose of the invalidity attacks. The trial Judge agreed, that absent an adjournment there could not be a fair trial given the extensive nature of the amendments and the consequent necessity to examine further prior art, possibly redraft experts' reports, etc. Given that IPCom did not ask for an adjournment, procedural fairness compelled the Judge to rule against the amendment.
The trial proceeded as planned, and IPCom's patent was held to be invalid. IPCom then made a post trial application to amend the Patent. The trial Judge also refused to entertain this application, and IPCom appealed to the Court of Appeal. The Court of Appeal agreed with the Judge’s conclusion, and the reasons for reaching that conclusion.
It is a long principle of patent litigation in England that a party must bring before the Court the issues that he seeks to have resolved so to enable the Court to conclude the litigation between the parties - i.e. one cannot have a second bite of the cherry. In this case the Court concluded that IPCom had had every opportunity of proposing amendments earlier. When it did propose amendments it was too late for them to be dealt with fairly at the trial; and having elected to go to trial on the patent as it stood and only when IPCom lost did it seek to prolong matters thereby to vex Nokia again with the same patent. IPCom argued that it could not be criticised, nor penalised, for not applying to amend earlier. However, in this respect they were in some difficulty in relying on the new citation as the reason for seeking amendments given that the new citation was withdrawn before trial. In the circumstances it could hardly be said that the new citation was the, or the only, trigger for the application to amend.
In conclusion, in the leading Judgment of the Court of Appeal Jacob LJ stated: "In short procedural tightening by way of making parties put up their cases in time for them to be dealt with fairly at a pre-arranged hearing without adjournment is the trend in Europe. The message is: "put up in time, or shut up". That can only be good for European industry".
As has been a trend in recent decisions, Jacob LJ stressed the need for courts across Europe to have a uniform approach. IPCom sought to criticise Nokia for bringing invalidity proceedings in England given that infringement and invalidity proceedings were underway already in Germany. Jacob LJ felt that it was entirely reasonable for Nokia to deploy this commonly used tactic to blunt the advantage that the bifurcated system (with infringement and validity issues being determined in different courts at a different time) sometimes can give to a patentee in German proceedings.
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