The Court was addressing the question of which body has the
final say in a patent case, a UK court or the EPO. It ruled that
when the UK courts system is exhausted and an order is made that
damages must be paid, that order cannot be overturned because of
actions at the EPO.
Lord Justice Jacob said in his ruling that his decision was
based on the need for certainty in business. "First and foremost,
the defendant has had a full and fair opportunity of attacking the
validity of the patent in his own proceedings. Next there is a very
very strong public interest in the finality of litigation. Finally
a party who had lost would have a strong motive for finding further
or better reasons for attacking a patent and getting some third
party to do so, thereby undermining the first decision. It is much
better that he knows that the first litigation about validity is
the time and place for him to get his best case together – that he
knows he will have no second chance," he said.
"Now a purist may say: it is a nonsense, and moreover an unjust
nonsense, for a man to have to pay for doing what, with hindsight,
we know to have been lawful," said Jacob. "But I think there are
good and pragmatic reasons why the purist approach makes bad
business sense. You cannot unravel everything without creating
uncertainty. And where a final decision has been made on a fair
contest between the parties, that should stand as the final answer
between them."
The case involved Unilin Beheer, which made flooring, and Berry
Floor and B&Q, which were found to have made flooring which
infringed a Unilin patent.
Unilin's patent was granted by the European Patent Office, which
entitled it to receive a UK patent. It sued Berry and B&Q in
the UK and won the case and the resulting appeal.
Meanwhile, Berry and B&Q started a separate procedure aimed
at convincing the EPO to render the patent invalid. This process is
called an 'opposition' and is similar to revocation actions in
national courts.
When Unilin sought its damages, Berry and B&Q applied for a
halt to that process pending the outcome of its opposition to the
patent at the EPO, which had originally granted that patent.
The Court of Appeal had to rule on whether or not the UK courts,
which are still considering how much Unilin should be paid, must
wait until the EPO process is complete to judge whether or not the
damages should be paid at all.
Jacob ruled that the UK court decision cannot be revisited
because a separate process at the EPO has come up with a different
result to it. "I am not sorry to reach that conclusion," he said.
"It means that businessmen in this country know that they can use
the rather speedy court system here to get a conclusion one way or
the other."
"If the patent is revoked, the way is
cleared; if it is upheld and held infringed then compensation will
be payable for past acts. And an injunction will run unless there
is a later revocation by the EPO. Subject to that last point, the
effect of all this is that one does not have to wait to find out
who has won until the slowest horse in the race gets there."
Jacob also said that the case was not a simple question of which
court was superior, but of how to best operate an imperfect
European patents system. "[It does not] help to ask whether a
national court or the EPO is 'top'. It all depends on the
circumstances, as the two following scenarios illustrate: the
patent is still under opposition when a national court holds it
valid and the EPO then revokes. So the EPO is 'top'. [Second,] the
EPO holds the patent valid and a national court subsequently
revokes it (there is no estoppel created by an EPO decision as to
validity […]). So the national court is 'top'."
"In truth asking which tribunal is 'top' is
simply not helpful – there is just the untidy compromise inherent
in the EPC and one which cannot be properly resolved unless and
until a rational patent litigation system for Europe is
created."
After Jacob's judgment had been written the two sides in the
case came to an agreement and settled their dispute, according to
one of the other judges, Lord Justice Mummery.
