Zipher Ltd v Markem Systems Ltd [2007] EWHC 154 (Pat) (16 January 2007)

Zipher Ltd v Markem Systems Ltd [2007] EWHC 154 (Pat) (16 January 2007)

A patentee who concedes partial invalidity but seeks to amend claims may maintain an infringement action based on proposed amended claims, as the law and procedure permit such applications and amendments, if allowed, are retrospective. There is no requirement to strike out the claim solely because the patentee does not rely on the granted claims' validity.

Citation
[2007] EWHC 154 (Pat)
Parties
Claimant: Zipher Limited; Defendant: Markem Systems Limited
Jurisdiction
England and Wales
Judgment Date
16 January 2007
Procedural Posture
Patent Infringement and Amendment Proceedings / Interlocutory Application to Strike Out Claim; Directions and Costs
Outcome
Application to strike out refused; directions and costs orders made; permission to appeal granted.
Legal Topics
Patent Amendment, Patent Infringement, Validity of Patent Claims, Procedural Law, Costs, Case Management
Intellectual Property Law Patent Law Civil Procedure Patent Amendment Patent Infringement Validity of Patent Claims Procedural Law Costs +1 more

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Parties

Zipher Limited

Claimant

Markem Systems Limited

Defendant

Procedural Posture

Patent Infringement and Amendment Proceedings / Interlocutory Application to Strike Out Claim; Directions and Costs

Legal Issues

  1. 1 Whether a patentee can bring an infringement action relying solely on claims as proposed to be amended when conceding invalidity of granted claims
  2. 2 Whether the claim should be struck out for lack of a present legal right
  3. 3 Appropriate directions and costs in patent amendment and infringement proceedings

Ratio Decidendi

A patentee who concedes partial invalidity but seeks to amend claims may maintain an infringement action based on proposed amended claims, as the law and procedure permit such applications and amendments, if allowed, are retrospective. There is no requirement to strike out the claim solely because the patentee does not rely on the granted claims' validity.

Court Disposition

Application to strike out refused; directions and costs orders made; permission to appeal granted.

Orders

  • Application to strike out the claim is refused.
  • Costs of the strike out application summarily assessed at £9,000 to be paid by the defendant to the claimant.