Kennametal Inc. v (1) Pramet Tools Sro (2) Associated Productions Tools Ltd
| Jurisdiction | England & Wales |
| Judge | The Deputy Judge |
| Judgment Date | 01 April 2014 |
| Neutral Citation | [2014] EWHC 1438 (Pat) |
| Docket Number | Claim No: HC 12 B 01709 |
| Court | Chancery Division (Patents Court) |
| Date | 01 April 2014 |
[2014] EWHC 1438 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
The Rolls Building,
7 Rolls Buildings,
London, EC4A 1NL
Mr. Henry Carr Q.C.
(Sitting as a Deputy Judge of the High Court)
Claim No: HC 12 B 01709
Mr. Alastair Wilson Q.C. and Mr. Richard Davis (instructed by Browne Jacobson LLP) for the Claimant
Mr. Iain Purvis Q.C. and MS. Kathryn Pickard (instructed by Charles Russell LLP) for the Defendants
JUDGMENT ON STAY OF REVOCATION
This is an application by the claimant to stay the order for revocation pending the outcome of proceedings brought by the claimant to amend the patent in the European Patent Office. The claimant offered an undertaking to prosecute such proceedings with due diligence and to bring the matter before the court forthwith on the conclusion of such proceedings for further consideration.
An application for amendment containing a request for limitation of the granted patent was made centrally in the EPO on 31st March 2014. Mr. Wilson has explained to me that the amendments fall into two categories. The first amendment seeks essentially to combine claim 9 with claim 1. That would be regarded as a deleting amendment. The second set of amendments seeks to introduce new method claims into the patent, which would be regarded as a validating amendment.
The claimant relies upon the decision of the Court of Appeal in Samsung v Apple [2014] EWCA Civ 250 where the Court of Appeal adjourned the hearing of an appeal from a UK judgment pending the conclusion of a central amendment application. The Court of Appeal did not decide in Samsung v Apple that it was not abusive to apply for a central limitation whilst prosecuting an appeal against a finding of non-infringement and invalidity in the UK, thereby changing the claims. They merely reserved the decision on that question until the form of the amendment was known.
Mr. Wilson draws attention to the fact that that the central amendment application in Samsung v Apple was made following the grant of permission to appeal by the trial judge. In the present case, there is no application for permission to appeal and therefore the judgment of this court, holding that the patent as granted is invalid, is a final judgment.
However, Mr. Wilson submits that it would be wrong, as a matter of principle, to restrict the right to make an application for central amendment to cases in which the patentee had decided to get an appeal off the ground. He submits that either the patentee should be entitled to take advantage of the jurisdiction or it should not and it would be artificial and unfair to require, as a precursor, an allegation that there is an arguable error in the reasoning of the trial judge. Such a precondition or precursor would be disruptive to the administration of justice since it would encourage appeals to be pursued purely for the purpose of buying time to make a central amendment.
Mr. Purvis, who appears for the defendants, points out that there is no question of debarring the patentee from making a central amendment application. On the...
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