Zipher v Markem: more bald men and combs

Readers may already be familiar with these two distinctive names, which came to the wider attention of the IP professions through the case of Markem v Zipher at the Court of Appeal (see previous IPKat post here), on appeal from three High Court judgments in August 2003 by HHJ Fysh QC. They have popped up yet again in a patents court judgment issued yesterday, reported on BAILII as Zipher Ltd v Markem Systems Ltd & Anor [2008] EWHC 1379 (Pat).

The cases are messy, to put it mildly, and any understanding of them was not helped by the partial overturning of Jacob LJ's reasoning (although not the eventual judgment) in the Court of Appeal relating to entitlement issues by the later House of Lords judgment in the separate case of Yeda v Rhone Poulenc (see IPKat post here).

The issues this time related to the substance of the patents (and of one still pending application), in particular whether they were valid and infringed, and if the patent proprietor would be allowed to amend in light of previous undertakings. Zipher, having won control after the first rounds, naturally decided to use the patents against Markem, who naturally counterclaimed for revocation on the usual grounds of novelty, inventive step, added subject matter and insufficiency.

At first instance, HHJ Fysh QC had held that Markem were entitled to some of the patents' broader claims, but that the narrower claims belonged to Zipher. Zipher's counsel Adrian Speck offered an undertaking to the court to narrow the wider claims by amendment if it was successful in establishing its claim to be entitled to them, which at first instance it was not. The Court of Appeal then allowed Zipher's appeal, acknowledging that some of the wider claims as they stood then were invalid, but did not refer to the previous undertaking.

Much discussion and argument this time involved whether the claims that Zipher were putting forward (which were not those they had previously offered to amend to) were valid, in light of many and varied pieces of prior art (and alleged prior art) that Markem put forward. Most of the claims survived this barrage of tests. Zipher would, however, have needed to make amendments in order to get anywhere with what they had. Floyd J refused to let them amend, even though he acknowledged that the law relating to the discretion of the court had been removed when sections 27 and 75 of the UK Patents Act were amended to bring them in line with the new EPC 2000. The judge's reason for refusing was that Zipher was already precluded by its unconditional undertaking to the court from making amendments which would result in claims wider than the claims they undertook to amend to in the first place. The application to amend was therefore refused, not because there was any general discretion to refuse amendments under section 75, but because the request was an abuse of process.

(Right: some patented uses a bald man can find for a comb)

However, just in case he was wrong on this point (can the IPKat sense another appeal coming?), Floyd J then went on to find that the patents were invalid for lack of sufficiency, and summed up the whole sorry mess by finding that there was really nothing left for Zipher to argue about. The patents they were trying to assert were invalid, could not be amended to give them what they wanted, some of the amendments they wanted to make would add matter, the patents were in any case insufficient, but if they had managed to get through all that then Markem would have been infringing.

The IPKat is astonished and saddened by the enormous effort (and money, obviously) expended over what in the end appear to be fairly threadbare patents. He can only conclude that this is a case where, over more than five years, the lawyers involved have been given pretty much free rein to use whatever arguments they could think up and pursue at all costs, but at no point does there appear to have been any realistic attempt made by either side to see the wood for the trees, and realise that there was in the end nothing worth fighting for. Does Jarndyce v Jarndyce ring any bells?