TNS Group Holdings Ltd v Nielsen Media Research Inc.
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE ARNOLD |
| Judgment Date | 20 May 2009 |
| Neutral Citation | [2009] EWHC 1160 (Pat) |
| Docket Number | Case No: HC 09 C No. 00811 |
| Court | Chancery Division (Patents Court) |
| Date | 20 May 2009 |
[2009] EWHC 1160 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand. London. WC2A 2LL
Before: Mr. Justice Arnold
Case No: HC 09 C No. 00811
MR. GUY BURKILL QC (instructed by Bristows) for the Claimant.
MR. DOUGLAS CAMPBELL (instructed by Jones Day) for the Defendant.
MR. JUSTICE ARNOLD:
Introduction
In this action the claimant seeks revocation of the defendant's European Patent (UK) No. 1 213 860. The patent in suit relates to television audience management measurement systems. There is a significant market in the UK and elsewhere in Europe for such systems due to the fact that rates for television advertising are dependent on the number of viewers of a programme. The claimant has also entered an opposition against the same European patent at the European Patent Office.
The patent in suit is a divisional of the defendant's European Patent (UK) No. 0 669 070. That European patent was the subject of an earlier EPO opposition, in which the patent was maintained at first instance on 14 December 2005, but revoked on appeal on 6 March 2008. The claimant had issued UK revocation proceedings in respect of that parent patent on 5 December 2007, but those proceedings became redundant in the light of the decision of the EPO's Technical Board of Appeal.
The present proceedings were commenced on 16 March 2009. By an application notice dated 1 April 2009 the defendant has applied to strike out the claim, alternatively for an order that it be stayed pending the resolution of the EPO opposition proceedings in respect of the divisional patent.
The application to strike out
The application to strike out is made pursuant to CPR r. 3.4(2)(b) on the basis that the claim is an abuse of the process of the court. The contention that the claim is an abuse of the process of the court is put on two distinct, if related, bases. The first basis is that the claim constitutes, to use the words of the heading to note 3.4.3.4 in Civil Procedure,“Pointless and wasteful litigation”.
The defendant contends that the claim is pointless and wasteful because it serves no commercial purpose. The reason why it is said to serve no commercial purpose is that prior to the commencement of the claim the defendant had offered the claimant a licence. The terms of the proposed licence are confidential and, accordingly, I will not refer to them in this judgment, nor is it necessary to do so. Suffice it to say, the defendant contends that the licence terms offered remove any commercial need for the claimant to revoke the patent. In addition, the defendant points to evidence served on the present application on behalf of the claimant in which it is explained that in the United Kingdom a contract was placed by the Broadcasters' Audience Research Board Limited, commonly referred to as “BARB”, whose members include the BBC, ITV, Sky, Channel 4, Channel 5 and the Institute of Practitioners in Advertising, in December 2007. That contract runs from 2010 to 2016. Because the patent in suit is a divisional, the patent will expire in 2014, if not revoked earlier. Accordingly, by the time a new contract comes up to be negotiated the patent will, in any event, have expired.
In support of the contention that the court has jurisdiction to strike out a claim as an abuse of the process on the grounds that it constitutes pointless and wasteful litigation, counsel for the defendant relies upon the principles that have been developed in a series of three Court of Appeal decisions in the field of defamation. The first in time was Broxton v. McClelland [1995] EMLR 485, in which the judge at first instance struck out the claim but the Court of Appeal allowed an appeal and restored it.
The second case was Wallis v. Valentine [2002] EWCA Civ 1034, [2003] EMLR 8. In that case, the alleged libel was only published to one person who already knew all or most of the libellous contents. Accordingly, any damages recovered would be very small or nominal. Furthermore, what was at stake was a 14 day jury trial being conducted by a claimant who had gleefully told the defendant that he had no money. The defendant was, therefore, faced with defending a trivial claim with no prospect of recovering costs from the claimant, but the court also appears to have accepted that the motive for the litigation was vindictiveness rather than a genuine desire to vindicate the claimant's rights. Accordingly, the Court of Appeal upheld the judge's decision that the claim should be struck out.
The third case is Jameel v. Dow Jones & Co. [2005] EWCA Civ 75, [2005] QB 946. This was another libel claim, this time involving foreign parties and very limited publication of the alleged libel within the jurisdiction. The Court of Appeal stayed the proceedings.
Counsel for the defendant relied on three passages from the judgment of the Court of Appeal given by Lord Phillips of Worth Maltravers M.R., as he then was, which are quoted in Civil Procedure note 3.4.3.4:
“54. … An abuse of process is of concern not merely to the parties but to the court. It is no longer the role of the court simply to provide a level playing field and to referee whatever game the parties choose to play upon it. The court is concerned to ensure that judicial and court resources are appropriately and proportionately used in accordance with the requirements of justice….”
“69. If the claimant succeeds in this action and is awarded a small amount of damages, it can perhaps be said that he will have achieved vindication for the damage done to his reputation in this country, but both the damage and the vindication will be minimal. The cost of the exercise will have been out of all proportion to what has been achieved. The game will not merely not have been worth the candle, it will not have been worth the wick.
… It would be an abuse of process to continue to commit the resources of the English court, including substantial judge and possibly jury time, to an action where so little is now seen to be at stake. Normally where a small claim is brought it will be dealt with by a proportionate small claims procedure. Such a course is not available in an action for defamation where, although the claim is small, the issues are complex and subject to special procedures under the CPR.”
Counsel for the defendant also prayed in aid the judgment of Laddie J. in Reckitt Benkiser (UK) v. Home Pairfum Ltd [2004] EWHC 302 (Pat), [2004] F.S.R 37. In his judgment, Laddie J. referred to Broxton v. McClelland and Wallis v. Valentine. That case was, of course, prior to the decision of the Court of Appeal in Jameel v. Dow Jones. It is sufficient to quote two paragraphs from the judgment:
“28. It follows that, on the basis of Wallis and in view of Mr. Hill's concessions, I should proceed on the basis that the court does indeed have power under the CPR to strike out a valid claim brought to enforce a right created by statute. Mr. Hill's argument was that the Claimant's application to strike out fails on the facts here. He relied in particular on the statement in Simon Brown LJ's judgment in Broxton that it is only in the most and obvious cases that a strike out will be appropriate. He said that it must be obvious that nothing will be achieved by the claim, that is brought for illicit reasons and that, in all the circumstances, the pursuit of the overriding objective would be seriously hindered were the claim allowed to proceed.
29. I accept the generality of that submission. However, I would prefer to express it somewhat differently. The court's powers under the CPR are wide. They should be tailored to meet the circumstances of the case. Although, as Wallis shows, the court has power to strike out even a prima facie valid claim where there is abuse of process, it does not follow that in all cases of abuse the correct response is to strike out the claim. The striking out of a valid claim should be the last option. If the abuse can be addressed by a less draconian course, it should be.”
I accept that the court has power under CPR r. 3.4(2)(b) to strike out a properly constituted claim on the ground that it is an abuse of process in circumstances where it is plain that the litigation is pointless and wasteful. In my judgment, however, a case such as the present cannot be struck out on that basis.
Section 72(1) of the Patents Act 1977 provides that “the court … may on the application of any person (including the proprietor of the patent) … by order revoke a patent… [emphasis added].” That stands in contrast with the position which previously existed under section 32 of the Patents Act 1949 whereby only “a person interested” could petition to revoke a patent. There is a series of cases which establishes that “any person” means what it says, and that no interest of any description is required to be shown by a claimant seeking to revoke a patent.
The first in time is a decision of the Enlarged Board of Appeal in Cases G03/97 and G04/97INDUPACK, GENENTECH/Third Party Opposition [2000] EPOR 81. The question that was raised in that case was whether an opposition was inadmissible because it was filed by an indirect representative, a so-called “straw man”. The Enlarged Board of Appeal held that an opposition was not inadmissible on that ground because Article 99 of the European Patent Convention provides that “any person” may oppose and “any person” means any person.
In Cairnstores Ltd v. Aktiebolaget Hassle [2002] F.S.R. 35, the claimant was an “off-the-shelf company which did not...
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