Last week, the Court of Appeal sent a clear message to patent holders defending revocation proceedings. Lord Justice Jacob in Nokia v IPCom  EWCA Civ 6 reaffirmed the principle that a post-trial application to amend a patent will ordinarily be refused if it would lead to a second trial on validity. In practice, this will be likely unless the patent holder is seeking only to delete claims of a partially valid patent. Where a patent is found to be invalid in its entirety, patent holders will not be allowed a "second bite of the cherry" via an application to amend the patent claims.
Where patents are subject to revocation proceedings in the UK (usually as a counter-claim brought in response to a patent holder’s claim for infringement), it is open to the patent holder to formulate one or more "fall-back" positions by seeking amendments to the wording of the patent claims. These applications to amend can either be conditional upon the patent in its unamended form being found to be invalid, or unconditional.
However, the Court of Appeal has made clear that it will not tolerate behaviour by patent holders who apply for an amendment that they could have made much earlier, and do so without any real justification. Generally, post-trial applications to amend will only be allowed if they are to delete invalid claims of an otherwise valid patent. However, if all the claims have been held invalid at trial, it is likely that the Court would refuse to allow the patent holder to amend post-trial because such an amendment would necessarily involve rewriting the claims with the resultant need for a second trial on the validity of the amended claims.
Therefore, patent holders facing revocation proceedings who anticipate validity issues with the patent in suit should consider applying to amend it (at least conditionally) as early as possible in the proceedings, even though formulating the amended claims may be made more difficult because issues of claim construction and infringement may yet to be fully identified.
IPCom acquired a patent portfolio relating to mobile communications technology from Robert Bosch GmbH and sought to negotiate licences with various mobile telephone manufacturers. It approached Nokia among others, but Nokia refused to pay what IPCom was asking.
IPCom commenced infringement proceedings in Germany against Nokia in relation to a number of its patents for a reported sum of €12 billion. Nokia retaliated by issuing revocation proceedings in both the German and UK courts. Nokia sued for revocation of fifteen of IPCom's patents in the UK. These proceedings were to be heard in five separate trials.
The first case to be heard was in relation to IPCom's so-called "Synch Patent" and "Access Rights Patent". Nokia successfully challenged the validity of both patents in the UK High Court before Mr Justice Floyd.
IPCom applied to amend its "Access Rights Patent" twice, proposing two variants, one shortly before trial (in response to fresh prior art put forward by Nokia, but which Nokia later withdrew), and the other after the finding of invalidity. Both amendment applications proposed extensive additions to what was formerly claimed.
Mr Justice Floyd refused IPCom’s pre-trial application on the grounds of procedural fairness that, without an adjournment of the trial, Nokia would be prejudiced because it was not in a position to deal with the amendments adequately. Nokia had withdrawn the prior art that had triggered the application to amend, and therefore IPCom should also have withdrawn its amendment application. He also refused the second (post-trial) application on the basis that it was an abuse of process.
IPCom appealed against the finding of invalidity in relation to its "Synch Patent" and both of its unsuccessful applications for amendments to its "Access Rights Patent". It did not challenge the finding of invalidity in relation to the "Access Rights Patent" in its unamended form.
Lord Justice Jacob in the Court of Appeal upheld the finding of invalidity for the "Synch Patent" and also agreed with the decision to refuse the first application to amend the “Access Rights Patent”. He agreed entirely with Mr Justice Floyd’s reasoning.
Lord Justice Jacob then considered in detail the principles governing post-trial amendment.
The Procedure for Amendment
Lord Justice Jacob considered the principles established in Nikken v Pioneer Trading  EWCA Civ 906 that a post trial application to amend a patent should ordinarily be refused if it would involve a second trial on validity. Procedural fairness requires a party to put forward the whole of its case before trial. The test was therefore one of abuse of process.
Other than in exceptional circumstances, where a party fails to advance a case he could have advanced much earlier and does so without any real justification, he is abusing the process of the Court.
In proceedings for revocation of a patent, once a patent holder knows the attacks made on his patent (particularly the cited prior art), he is fully entitled to formulate a "fall-back" position by seeking conditional amendment to the wording of the patent claims. However, IPCom had every opportunity to propose the amendments to its patent so that there could have been a trial about them, but had not done so. The Court of Appeal rejected IPCom’s argument that the Court's discretion should be exercised differently because the patent proceedings were really part of wider negotiations between the parties. The question was whether there was an abuse of process in the litigation before the English courts about the particular patent concerned and not some "woollier question". It did not matter that there was a forthcoming trial concerning a divisional of the patent in suit which, IPCom submitted, was a “convenient slot” for the validity of the amended patent to be heard. Nor did it matter that the amendments were originally proposed because Nokia had put forward further prior art, because that citation was subsequently withdrawn. The Court of Appeal did not consider that IPCom had been taken by surprise by anything in Nokia’s experts’ reports.
Article 138 EPC 2000
Lord Justice Jacob also rejected IPCom's argument that Article 138 of the European Patent Convention 2000 created a broad right for patent holders to amend the claims of their patents. He held that Article 138 only required national authorities to provide for a procedure for amendment, but it did not govern that procedure, nor did it require national authorities to conduct themselves in a manner that would be considered an abuse of process under national law. Furthermore, Article 138 would only apply to cases where the revocation affected the patent in part, rather than the whole patent.
The Enforcement Directive (2004/48/EC)
IPCom also argued that amendment of its patent was part and parcel of enforcement of the patent under Article 3 of the EU Enforcement Directive. The Court of Appeal rejected this, stating that the two were quite distinct: amendment is concerned with narrowing the scope of protection rather than the enforcement of what is protected.