Halliburton Energy Services Inc.'s Patent
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE JACOB,LORD JUSTICE RIX |
| Judgment Date | 21 February 2006 |
| Neutral Citation | [2006] EWCA Civ 185 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | A3/2005/2193 |
| Date | 21 February 2006 |
[2006] EWCA Civ 185
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM CHANCERY DIVISION, PATENTS COURT
(MR JUSTICE PUMFREY)
Royal Courts of Justice
Strand
London, WC2
Lord Justice Rix
Lord Justice Jacob
A3/2005/2193
MR A WATSON Q.C. (instructed by Messrs Bristows, LONDON WC2A 3AA) appeared on behalf of the Applicant
MR TAPPIN (instructed by The Treasury Solicitor, LONDON SW1H 9JS) appeared on behalf of the Respondent
Judgement
1. This is an unusual application. It comes about in this way. The patentees, Halliburton, sued Smith International and others for infringement of two European patents. Pumfrey J ruled that the patents were invalid. Halliburton appealed, but before the appeal got very far there was a worldwide settlement which included the settlement of this dispute. As a result of that, Smith International no longer desire to resist the appeal. Halliburton, nonetheless, want their patents back. They say Pumfrey J was wrong. The question then arises as to what this court should do. Could it allow the appeal without going into the merits? Must it hear the appeal, just hearing from the appellant, or should some assistance be either required or at least enquired of from the Comptroller, who under the rules is a party to all patent actions? Normally, of course, he only turns up when some issue of principle arises affecting the office or the law in general. This is not that sort of case.
In recent years a number of cases have come to this court in similar situations, or where the appeal has actually been allowed by consent. The practice has grown up of restoring the patent to the register without argument and with a comment that the restoration did not mean the patent had been held valid or ruled upon in any way by this court. Before us the Comptroller said that that practice is wrong; that this court cannot, without deciding for itself, reverse an order for revocation. It must be satisfied that the judge below was wrong.
Halliburton agree with the Comptroller that that is the appropriate course. They say they do not want their patent restored by, in effect, an administrative order of this court. If that is what they get they will have damaged goods. They want a ruling that the judge was wrong.
The Comptroller has pointed out that under the rules and practice direction, CPR 52, Practice Direction 13.1, the Court of Appeal will not normally make an order by consent. The practice direction reads as follows:
"The Appeal Court will not normally make an order allowing an appeal unless satisfied that the decision of the lower court was wrong but the Appeal Court may set aside or vary the order below a court with consent and without determining the merits of the appeal if it is satisfied there are good and sufficient reasons for doing so. Where the Appeal Court is requested by all parties to allow an application or an appeal the court may consider the request on the papers.
"The request should state that none of the parties of the child or patient can set out the relevant issue of the proceedings and the matters relied on as justifying the proposed order can be accompanied by a copy of the proposed order."
I think, given that practice direction, given the views of the Comptroller and the patentees in this case, that the court has no option but to hear the merits of the appeal. The previous practice, save perhaps in some exceptional circumstance which I cannot imagine at the moment, is not appropriate. The normal position must be that the Court of Appeal will not restore a...
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