Rockwater Ltd v Technip France SA & Anor

A patent injunction may cover narrower claims where a wider claim encompasses them and the narrower claims were previously invoked, even if allegations concerning them are later abandoned. A stay of an injunction, financial inquiry or costs assessment requires an exceptional reason. Delivery up is ancillary to an injunction and is inappropriate for future goods. A statutory higher-costs rule following a second successful validity challenge should be applied unless exceptional circumstances exist. Consequential costs orders may include a provisional interim payment assessed on a rough basis.

This was an appeal from the Chancery Division Patents Court before Mr Justice Laddie. After the Court of Appeal’s substantive judgment in patent proceedings between Rockwater Ltd and Technip France SA and another, the court determined consequential matters concerning the form and stay of the injunction, a proposed liberty-to-apply provision, delivery up, costs, an interim payment and permission to appeal.

1. Scope of injunction. The injunction was not limited to claims 3 to 9. Claim 3 was wider than claims 1 and 2, and an attempt had been made to invoke claims 1 and 2. It was therefore appropriate for the injunction to cover the carrying out of the processes in those claims, notwithstanding that the allegations concerning them had later been dropped and there was no extant threat to infringe them.
2. Stays. There was no exceptional reason to stay the injunction, the financial inquiry or the assessment of costs. The absence of a vessel within the jurisdiction and of a particular project did not justify a stay.
3. Liberty to apply. The proposed special proviso was unusual and would have enabled a party to bypass the statutory procedure for obtaining a declaration of non-infringement. The court saw no reason to permit that course.
4. Delivery up. Delivery up operates in aid of an injunction. An order requiring delivery up of future goods was inappropriate, and the injunction was sufficient protection.
5. Costs. No reduction was made for the abandoned allegations concerning claims 1 and 2. The relevant issues had already formed part of the consideration of claim 3, and the costs attributable to the unpursued allegations were trivial. The statutory higher-costs rule applied because the patent had successfully survived an earlier validity challenge and the later challenge involved materially similar prior art and issues. No exceptional circumstance displaced that rule.
6. Interim payment and permission. The assessment of an interim payment was necessarily provisional and rough. The appropriate payment on account of costs was £1.25 million, having regard to the fact that indemnity costs would apply. Permission to appeal was refused.

• Court of Appeal (Civil Division): in [2004] EWCA Civ 522, determined consequential matters following its earlier judgment and refused permission to appeal.
• Chancery Division, Patents Court (Mr Justice Laddie): the appeal came from this court; the lower decision’s citation and substantive disposition are not stated in the judgment.