• Claimant had commenced patent revocation proceedings in the Intellectual Property Enterprise Court (IPEC)
  • Patent owner counterclaimed for infringement in the Patents Court
  • Should the revocation action be transferred from IPEC to the Patents Court to allow the two issues to tried together or should they remain bifurcated?

What's it about?

VanClare SE LLC (VanClare) is the registered proprietor of a UK patent for a smart utility metering system (Patent). Metertech LLC (Metertech) is the exclusive licensee. 

British Gas Services Limited (BGS) issued a claim for revocation of the Patent in the IPEC in March 2015. In April, Metertech commenced proceedings in the Patents Court against BGS for infringement of the Patent. VanClare was joined to the infringement proceedings as an additional passive defendant.

Two applications were brought before Arnold J to consider, sitting as an IPEC judge. The first was an application by VanClare for the transfer of the revocation claim by BGS from the IPEC to the Patents Court. The second was an application by BGS for a stay of a claim for infringement of the Patent in the Patents Court, pending the outcome of the revocation proceedings. The court held that the revocation claim should be transferred from the IPEC to the Patents Court. 

Why does it matter?

Arnold J made clear that, if the court is to depart from normal practice (i.e. validity and infringement should be tried together), then “some good reason needs to be shown for doing so”. It must be shown that bifurcation (i.e. separating the trial of validity and infringement issues) of the issues is the better way in which to proceed. In this case, neither of BGSL’s reasons, namely (i) that the validity case was more advanced/ straightforward than the infringement case and (ii) that BGC should not have to expend resources on infringement issues until validity has been determined, justified hearing the issues separately. Arnold J could see no issue on timing for the case in the Patents Court and moreover any delay caused by bifurcation (where the court would potentially have to address the Patent validity twice) could be unjust to the patentee as the patent only had five more years to run.

Now what?

Parties to patent proceedings should note that the courts will lean towards “normal practice” and look to try issues of validity and infringement together, unless there is “good reason” not to do so. The benefit of trying the issues together does, however, avoid the risk of an inconsistent decision on “divergent interpretations” of the patent claims and prevents an appeal against the validity decision leading to ensuing delays/stays to infringement proceedings.

British Gas Services Ltd v Vanclare SE LLC [2015] EWHC 2087 (IPEC), 17 June 2015