TNS Group Holdings Ltd. v Nielsen Media Research Inc

A properly constituted and arguable patent revocation claim is not an abuse merely because the claimant lacks a commercial interest or has been offered a licence. Under Patents Act 1977, section 72(1), any person may seek revocation and motive is irrelevant, subject to abuse in the conduct of the proceedings. It is also legitimate to seek the wider settlement or commercial benefits of an English validity judgment. A stay pending parallel EPO proceedings is discretionary. The relative timing of the proceedings and the commercial party’s reasons for resisting a stay usually carry substantial weight. Duplication of proceedings creates no presumption in favour of a stay.

The claimant sought revocation of the defendant’s divisional European patent concerning television audience measurement systems. The defendant applied under the Civil Procedure Rules 1998 to strike out the claim as pointless, wasteful or brought for an improper or collateral purpose. Alternatively, it sought a stay pending the claimant’s opposition to the same patent before the European Patent Office. The central issues were whether a claimant without a sufficient commercial interest could bring an arguable revocation claim, whether intending to rely on an English judgment abroad was improper, and how the court’s discretion to stay parallel proceedings should be exercised.

1. The strike-out application was refused. The court accepted that Civil Procedure Rules 1998, rule 3.4(2)(b), gives the court power to strike out a properly constituted claim as an abuse where the litigation is plainly pointless and wasteful. That jurisdiction is exceptional and must be applied having regard to the circumstances of the case.

2. Section 72(1) of the Patents Act 1977 deliberately permits any person to apply for revocation. Unlike the former section 32 of the Patents Act 1949, it imposes no requirement to show an interest, including a commercial interest. The claimant had a properly constituted and arguable claim, and there was no suggestion that the conduct of the proceedings was abusive. Its lack of commercial need therefore could not make the claim an abuse. The public interest in removing invalid patent monopolies distinguished patent revocation from the defamation authorities.

3. The claimant’s intention to obtain the commercial benefits or “spin-off value” of an English validity judgment was legitimate. The authorities, including Unilever plc v Frisa N. V. [2000] F.S.R. 708 and Glaxo Group Ltd v. Genentech Inc [2008] EWCA Civ 23, supported the use of such judgments to assist settlement or proceedings concerning the same European patent in other Contracting States or before the EPO. That purpose was not improper or collateral.

4. The application for a stay was also refused. Following the guidance in Glaxo Group Ltd v. Genentech Inc [2008] EWCA Civ 23, the discretion was very wide and required a global assessment of the balance of justice. The UK proceedings were likely to conclude at least two years before the EPO opposition. The claimant’s reasons for seeking earlier commercial certainty were genuine and not fanciful. Although a stay might save some costs, that consideration was outweighed by the earlier resolution available in the Patents Court.