AIPPI Seminar Report: Res judicata and the importance of Icelandic volcanoes in patent proceedings

The AmeriKat keeping her angry eyes on
while others re-lived
2013's year of res judicata
Several months after the Supreme Court's towering decision in Virgin v Zodiac [2013] UKSC 46 (see IPKat posts here), those at the heart of the dispute gathered to amaze and awe the audience at the first AIPPI seminar event of the season with their knowledge of all things res judicata. The AmeriKat was too busy being angry about the Commission's response to a question on the UPC to attend, but one of her wonderful colleagues, Steven Baldwin (Allen & Overy LLP), attended. Steven reports as follows: 
 "On Tuesday evening, members of AIPPI gathered to hear a panel discussion entitled “Re-writing Res Judicata – the effect on stays for EPO Oppositions” which centred around the long-running saga of Virgin Atlantic Airways Ltd v Zodiac Seats UK Ltd [2013] UKSC 46. And who better to take part in this discussion than Gordon Harris (Head of Intellectual Property at Wragge & Co – Zodiac’s solicitors), Henry Carr QC (leading counsel for Zodiac in the Supreme Court) and Richard Miller QC (leading counsel for Coflexip in Coflexip SA v Stolt Offshore MS Ltd (No.2) [2004] EWCA Civ 213, one of the cases expressly overruled by the Supreme Court in Virgin).  
For those of you unfamiliar with the facts, this case involves infringement proceedings brought by Virgin based on a European patent for a “seating system and passenger accommodation unit for a vehicle” which Zodiac’s “Solar Eclipse” airline seats allegedly infringed. Infringement proceedings were commenced against Zodiac in July 2007 and opposition proceedings were commenced by Zodiac at the EPO in February 2008. At first instance in the UK courts Virgin’s patent was held to be valid but not infringed. At the EPO the Opposition Division upheld the patent. Both decisions were appealed.  
By Boaworm (Own work) [CC-BY-3.0
via Wikimedia Commons
At the Court of Appeal in October 2009, the patent was held to be both valid and infringed. Zodiac applied for a stay pending (i) an application for permission to appeal to the Supreme Court and (ii) the outcome of the EPO proceedings. In December 2009, the CA rejected this application for a stay. The Court relied on the doctrine of res judicata and in particular the CA decision in Unilin v Berry [2007] EWCA Civ 364.  
 To make matters worse for Zodiac, the TBA hearing planned for April 2010 was postponed until September 2010 due to the eruption of the airline industry’s favourite Icelandic volcano “Eyjafjalajökull”, by which time the Supreme Court had refused Zodiac leave to appeal on the merits of the Court of Appeal’s findings. Almost inevitably, the TBA held that Virgin’s patent was invalid by reason of prior art. Although the Court of Appeal subsequently discharged the injunction and order for delivery up originally ordered by them against Zodiac, the Court rejected Zodiac’s application to discharge the order for an enquiry as to damages on the basis that the earlier Court of Appeal's decision was res judicata. The Supreme Court granted leave to appeal on this point. The case was eventually heard by the Supreme Court in July 2013.  
 In the Supreme Court the Justices overruled the cases of Poulton v Adjustable Cover and Boiler Block Co [1908] 2 Ch 430, Unilin and Coflexip, thus turning its back on over 100 years of case law. However, this came as no surprise to many – the dissenting judge in Coflexip, Neuberger LJ (as he then was), was one of the judges that heard this appeal in the Supreme Court. The question for our panel was: did the Justices make the right decision and what impact would this decision have on patent law in practice?  
Is there no 'justice' in judicata,
Mr Miller QC?
 After Mr Harris had provided a review of the facts, he handed over to Richard Miller QC, who started by drawing attention to previous House of Lord decisions (Mulkerrin’s [2003] 1 WLR 1937 (HL); Vervaeke v Smith [1983] AC 145) in which the Court held that res judicata is a form of estoppel that should apply “even though the decision may be wrong”. He argued, contrary to the Supreme Court, that res judicata is not about justice but that instead the need for finality outweighs the problem of holding parties to a wrong decision, thus echoing Jacob LJ’s statement in Unilin that “businessmen want certainty”. Mr Miller QC also highlighted the uncertainty as to exactly when a Defendant will be able to rely on an order for revocation in a damages assessment given that Lord Neuberger’s stated that a Defendant will only be able to rely on such an order “absent special factors”, without then specifying what those factors may be. However, the issue which seemed to cause the most stir was Lord Neuberger’s observation that he would expect a court to normally agree to re-open a judgment on the assessment of damages, before it has been passed and entered, “if any revocation or amendment was raised” which had a bearing on that assessment. The feeling in the room was that the approach of the Supreme Court in this case effectively allows parties to have an indefinite number of ‘bites at the cherry’ if they are able to find third parties (such as a ‘gun-for-hire’ firm of lawyers or patent attorneys) willing to bring revocation actions in the UK on their behalf on the basis of new prior art (this point was also raised specifically by Mr Justice Arnold, a member of the audience) and that this would see the time taken for damages enquiries in the UK courts rise dramatically.  
The stars did not align for
Zodiac when the
volcano erupted, explained
Mr. Carr QC
Up then, stepped Henry Carr QC who, naturally, disagreed with Richard Miller QC’s opinion that res judicata is not about justice. On the contrary, Mr Carr QC stated that issue estoppel and abuse of process are “all about justice” and noted the courts’ attempts to restrict the scope of strict action estoppel in cases such as Arnold v National Westminster Bank plc [1991] 2 AC 93 precisely because it can lead to injustice. He also asked whether it could really be seen as right, in the name of finality, for a patentee to get £49 million for a patent that never existed (revocation being retrospective) and therefore cannot ever have been infringed. He then reminded the room that both he, and the Supreme Court, agreed that it could not. Mr Carr QC continued by pointing out that the Justices were heavily influence by the fact that, had the volcano not erupted when it did, Zodiac would have been able to rely on the TBA decision in their application for permission to appeal and the Supreme Court may not therefore have refused permission to appeal on the merits. Indeed, Lord Sumption stated in his judgment that patent law should depend on “more substantial and predictable considerations than these”.  
Finally Mr Carr QC moved on to discuss the effect of Virgin on stays, explaining that the Justices suggest that the UK courts should stay decisions pending the outcome of EPO decisions. He then referred to the guidance on stays provided by the Court of Appeal in the recent case of IPCOM v HTC [2013] EWCA Civ 1496 before concluding that it is still very hard to get a stay in the UK courts, particularly if the patentee is willing to give undertakings to repay any monetary compensation they receive for infringement of a patent which is subsequently revoked. 
The AmeriKat knows the meaning
of the AIPPI logo, but do you?  
For this author, Tuesday’s discussion left no doubt in his mind that this decision is problematic in a number of ways and that it may well have left the door open for an indefinite number of revocation actions to be brought against the same patent by various disinterested third parties motivated solely by financial gain. One might also question why a patentee would choose to litigate in a country where it is unclear to them whether a ‘final’ judgment is indeed final. That said, it is difficult to ignore the sentiments reflected in the following question put to Virgin’s counsel by Lady Hale during the Supreme Court hearing: 
 “How would you encapsulate, in a sentence, the injustice of depriving somebody of something that they should never have had”.
Until we are able to come up with an answer to this question which sufficiently satisfies the Supreme Court, it seems that, as regards res judicata, patentees may find themselves wading around in the murky bog of patent ‘justice’, desperately grasping for a sympathetic hand to pull them out, for some time to come."
AIPPI Seminar Report: Res judicata and the importance of Icelandic volcanoes in patent proceedings AIPPI Seminar Report: Res judicata and the importance of Icelandic volcanoes in patent proceedings Reviewed by Annsley Merelle Ward on Thursday, January 16, 2014 Rating: 5


  1. Would I dare to suggest that the name of the volcano is Eyjafjöll and that Eyjafjallajökull is the name of the ice cap ?

  2. Perhaps it would help to distinguish between situations in which a patent is later revoked by the EPO (being slow), and situations in which the patent is later revoked in subsequent UK court proceedings. For the second situation, the alleged infringer in the first UK proceedings only has itself to blame for not finding the prior art that is used in the subsequent UK proceedings, and so it would not be unjust for them to still have to pay the damages. For the first situation, it is not the fault of the alleged infringer that the EPO hasn't finished with the patent yet, and the alleged infringer should be able to rely on the EPO's decision to revoke the patent, no matter how slow the EPO is to do this.

  3. It is not clear to me why it should be open to parties at the EPO to repeatedly return with revocation actions based upon new materials. If you looked and did not uncover materials, new material should only be available to subsequent revocation actions by the same party if the old search was done properly and for external reasons new evidence was magically found. Simply piling more money into searching on the basis that there is the spectre of having to pay a massive defined amount is unfair.

    If a party has brought revocation proceedings and lost, they have had their bite and it would not be unjust to then demand that the injunction and damages be paid.
    Surely there is the potential for injustice if a defendant does NOT pay a damages claim (concluding that 49M is too much to pay but that it can fund the on-going cost of an invalidity action at the EPO as some kind of "tax") but ultimately bankrupts itself through legal actions and fishing expeditions trying to invalidate the patent (ultimately unsuccessfully). Surely the court should seek to have a payment made into court to ensure that the damages are available and award that some of the costs be paid to the successful claimant lest a large and powerful defendant be put in the position that it can steamroller a claimant by having protracted and expensive proceedings and suspend having to pay by ever more proceedings.

    I say this as someone who has fought a number of trade mark cases where the outcome was obvious but the validity of the claimant's marks were put in question, the defendant telling us in potential settlement meetings that it would continue to fight in order to prevent us being able to bring infringement proceedings and saw the cost of opposition and invalidity proceedings as an "operating tax" which still left them a substantial profit which they could then hive off to shareholders, and could remunerate themselves as employees quite nicely thankyouverymuch in the meantime.


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