IP Com had brought an infringement action against Nokia for infringement of two of IP Com’s European patents EP(UK) 540808 (“the Synch Patent”) and EP(UK)1186189 (“the Access Patent”). In the normal way in patent disputes, the defendant, Nokia, sought in reply to have both patents invalidated.
At first instance Mr Justice Floyd had held that both patents were invalid, the decision being based mainly on GSM standards as prior art. The Federal Patent Court in Germany had also taken the same view. In the case of the Access Patent, the proprietor, IP Com, applied to amend the patent shortly before the trial and was refused on the grounds of procedural unfairness. On appealing to the Court of Appeal to overturn the invalidity decision on the Synch Patent IP Com argued that the judge had not construed the claims correctly and also took the opportunity to renew its application to amend the Access Patent.
The Court of Appeal rejected IP Com’s argument on construction of the Synch Patent and upheld Floyd’s decision to invalidate.
On the application to amend the Access Patent, IP Com put forward two sets of amendments: those rejected by Floyd J pre-trial and a new set of amendments. Nokia had argued the amendments should not be allowable because they were unclear and still invalid, and, more importantly, their consideration would be tantamount to a new trial.
IP Com argued against Nikken v Pioneer Trading  EWCA Civ 906 which stated that post-trial application to amend should be refused if it entailed a second trial on validity, as this would be procedurally unfair. It cited that the Johnson v Gore Wood  2 AC1 which provided a test for “misuse or abuse of process” and gave the court discretion to allow amendments pre- and post-trial.
Jacob LJ rejected IP Com’s arguments and cited the rule in the 1843 case of Henderson v Henderson that a party should not be allowed to advance in a second proceeding an issue which it should have advanced at the first. He noted that this rule had been applied in patent cases. He added that this was not only in the interest of the parties but also in the public interest and that the overriding test was one of abuse of process and procedural fairness. Although there could be exceptions to the general rule, IP Com had failed to demonstrate that there current facts were exceptional.
The court also rejected IP Com’s submission that the original application to amend had been made late due to late availability of expert reports, stating that the findings in the expert reports should not have been surprising. The patentee should have had a good idea of the case for revocation.
IP Com also argued that Article 138 of the European Patent Convention (EPC) had been revised in 2000 to liberalise national proceedings for patent claim amendments. The court rejected this and said the EPC changes had been introduced to ensure that all EPC states had a minimum post-grant amendment procedure in place, rather than to liberalise the rules, and the principle of procedural fairness was unaffected by the EPC revision.
The court also rejected IP Com’s attempts to gain support from the EU Enforcement Directive, IP Com’s argument being that the amendment was part and parcel of the patent’s enforcement, Jacob LJ indicating that patent amendment and patent enforcement are two distinct issues.
Jacob LJ was particularly scathing in his rejection of this appeal, stating that parties to a court procedure should “put up in time, or shut up” and characterising IP Com’s application to amend an invalid patent as an abuse of process.
He noted the trend across Europe to tighten up procedures and force parties to put their cases fairly and in time for a pre-arranged hearing.
The Court of Appeal was very keen to demonstrate that it expects parties to bring issues to the court in a timely manner. Except in exceptional circumstances, it would be procedurally unfair to re-consider an issue on which judgment had already been passed.
Patent owners should anticipate the need for amendments to patent claims and, above all, apply to the court in good time to make the amendments.
More generally, patent litigants should ensure that they are prompt to address all the issues, as delays or omissions may be fatal. In preparation for trial parties need to cover all possible angles, as they will be denied a second bite at the cherry.
Nokia GmbH and others v IP Com GmbH  EWCA Civ 6, 20 Jan 2011