Patents

Case Note Coflexip S.A. v Stolt Offshore Ms Ltd.

Jane Lambert

20 March 2000
Last updated 15 Nov 2005

This article formerly appeared on the Old Colony House website

The issue in this case was whether a party that had been held to have infringed a patent can take advantage of the revocation of the patent in subsequent proceedings. Ever since  it has been settled that anyone found to have infringed a patent still has to pay damages even if that patent is subsequently revoked. Despite a powerful dissenting judgment from Neuberger LJ, the Court of Appeal affirmed that that was still the law.
The Issue
The issue arose in an application to stay an inquiry. In Rockwater Limited v Coflexip S.A [2003] EWHC 812 (Ch) Laddie J held that the same patent as in Coflexip v Stolt was invalid.  Accordingly, the defendant in Coflexip v Stolt applied for the stay pending appeal in Rockwater v Coflexip. Jacob J refused that application on the ground that there was no point in delaying the proceedings because the defendant would still have to pay damages whatever the result in Rockware v Colfexip. The unenviable task for the Court of Appeal was to choose between allowing a claim to proceed for damages of tens of millions of pounds for infringement of a monopoly that ought never to have been granted and departing from the salutary principle that every law suit must eventually come to an end. Happily, that dilemma vanished a few weeks later by the reversal of Laddie J's judgment in Rockwater Ltd v Technip France SA and another [2004] EWCA Civ 381 (1 April 2004)
Judgment
The Court of Appeal decided to uphold Jacob J's decision on the ground that they were bound by their previous decision in accordance as a result of the rule in Young v Bristol Aeroplane Co. Ltd. [1994] 2 KB 718. Neuberger LJ would have allowed the appeal on the ground that there was a discretion in cases of issue or abuse of process, as opposed to cause of action, estoppel to take account of a subsequent revocation and that it would have been right, in the circumstances of the case, to exercise it. However, the others held that any discretion was very limited and that the circumstances were not such as to justify its exercise in the case before them. No member of the Court was prepared to entertain alternative arguments that any right to damages for infringement of a subsequently revoked patent under the legislation that applied when Poulton was decided had been changed either by s.62 (3) of the Patents Act 1977, which precludes damages for infringement of a subsequently amended patent unless the court holds that the specification was published and framed in good faith and with reasonable skill and knowledge, or the importation through s.130 (7) of the 1977 Act of art 33 of the Community Patent Convention which would have rendered a revoked Community patent null and void from the outset.
Comment

While much of the heat has been taken out of this decision by the appeal in Rockwater, this is clearly a matter which will have to be resolved one day.

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