Zipher Ltd v Markem Systems Ltd

Zipher Ltd v Markem Systems Ltd

A patentee may bring proceedings relying on proposed amended claims even if granted claims are accepted as invalid, provided there is partial validity and the amendment, if allowed, will have retrospective effect; procedural rules and case law support the court's discretion to allow such proceedings and to set directions accordingly.

Parties
Claimant: Zipher Limited; Defendant: Markem Systems Limited
Jurisdiction
England and Wales
Judgment Date
16 January 2007
Procedural Posture
Patent Infringement and Amendment Proceedings / Ruling on Strike Out Application, Costs, Directions, and Permission to Appeal
Outcome
Strike out application refused; permission to appeal granted; costs summarily assessed; directions given for amendment application and main action.
Legal Topics
Patent Amendment, Patent Infringement, Strike Out Application, Costs, Case Management Directions
Intellectual Property Civil Procedure Patent Amendment Patent Infringement Strike Out Application Costs Case Management Directions

Case Brief

Summary, issues, holding and outcome

More case intelligence is available

Unlock the full research layer for this judgment.

Full judgment text Downloadable case file Legal principles 7 Authorities cited 9 Party arguments 2 Amounts and remedies 1
Sign in to unlock

Parties

Zipher Limited

Claimant

Markem Systems Limited

Defendant

Procedural Posture

Patent Infringement and Amendment Proceedings / Ruling on Strike Out Application, Costs, Directions, and Permission to Appeal

Legal Issues

  1. 1 Whether a claim for patent infringement can proceed when the patentee relies solely on proposed amended claims and not the granted claims
  2. 2 Whether the patentee has a cause of action when the validity of the patent is dependent on a pending application to amend
  3. 3 Appropriate costs and directions for the proceedings

Ratio Decidendi

A patentee may bring proceedings relying on proposed amended claims even if granted claims are accepted as invalid, provided there is partial validity and the amendment, if allowed, will have retrospective effect; procedural rules and case law support the court's discretion to allow such proceedings and to set directions accordingly.

Court Disposition

Strike out application refused; permission to appeal granted; costs summarily assessed; directions given for amendment application and main action.

Orders

  • Defendant to pay claimant's costs summarily assessed at £9,000.
  • Permission to appeal granted to defendant.