Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd & Anor

A retrospective amendment to a patent removes the basis for enforcing a pre-amendment injunction against future infringements, and any ancillary delivery-up order should fall with it. It does not extinguish a perfected judgment for damages for infringements committed before amendment. An inquiry into damages quantifies that judgment; it does not enforce the amended claims. The same approach applies whether the patent was amended or revoked. The inquiry remains confined to acts covered by the declaration and occurring before judgment, although a pre-judgment contract or offer may remain within its scope even if manufacture or delivery occurs later. The Court also confirmed that its limited reopening jurisdiction cannot be used to reargue legal correctness.

Virgin commenced proceedings against Contour concerning alleged infringement of its patent for aircraft seating. Lewison J held that there had been no design copying or patent infringement, but rejected Contour’s validity challenge: [2009] EWHC 26 (Pat).

On Virgin’s appeal, the Court of Appeal reversed the construction of the patent claims, held that the patent was infringed, and dismissed Contour’s cross-appeal on validity: [2009] EWCA Civ 1062. The Court made an order containing declarations, an injunction, delivery-up relief and an inquiry as to damages.

After the European Patent Office amended the patent, Contour sought to vary the order, discharge the inquiry, release undertakings and recover interim payments. The central issues were the effect of retrospective amendment on existing relief, the scope of the damages inquiry, and the Court’s jurisdiction to revisit its order.

Patten LJ gave the judgment, with Jacob LJ and Smith LJ agreeing.

1. Damages inquiry. Amendment under sections 75(3) and 77(4) of the Patents Act 1977 has retrospective effect, but it does not deprive the patentee of property in a perfected judgment for damages. The inquiry quantifies the amount payable under that judgment; it is not an attempt to enforce the amended claims. The Court applied Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364, Coflexip v Stolt (No 2) [2004] FSR 34 and Poulton v Adjustable Cover and Boiler Block Co [1908] 25 RPC. Amendment and revocation are materially indistinguishable for this purpose.
2. Scope of the inquiry. The declaration covered the disposal and offers to dispose of the nine ship-sets under a contract entered into before judgment. Those matters remained within the inquiry even though manufacture or delivery might occur later. Manufacture and supply occurring after the order were outside the existing inquiry and would require fresh proceedings based on the amended patent.
3. Injunction and delivery up. Dudgeon v Thomson (1877) 3 App Cas 34 established that an injunction based on an unamended patent cannot restrain future alleged infringement of amended claims. Fresh proceedings are required. Delivery-up relief under section 61(1)(b) of the Patents Act 1977 reinforced the injunction and had become redundant. Paragraph 5 of the order was therefore deleted.
4. Undertakings. The guarantee and the £10,000-per-seat undertaking were not discharged, and the £3.6 million already paid was not repayable. The payments could be treated as interim payments on account of the damages claim within the inquiry. The Court declined to amend the undertaking concerning Delta because there was no material showing that the Court had intended different wording, and rectification would involve a contractual party absent from the proceedings.
5. Jurisdiction. CPR 52.17 is confined to cases involving a serious defect in the integrity of the earlier proceedings and cannot be used to reargue legal correctness. The Court nevertheless had jurisdiction under section 15 of the Senior Courts Act 1981 to consider the effect of the changed circumstances on continuing relief. The application was dismissed except for deletion of the delivery-up order.

• Court of Appeal (Civil Division): On the present application, dismissed Contour’s challenge to the damages inquiry and undertakings, but deleted paragraph 5 of the order for delivery up: [2011] EWCA Civ 163.
• Court of Appeal (Civil Division): Allowed Virgin’s appeal on construction, dismissed Contour’s cross-appeal on validity, and made the original declarations, injunction, delivery-up order and damages inquiry: [2009] EWCA Civ 1062.
• High Court of Justice, Chancery Division, Patents Court: Lewison J rejected the infringement claims and upheld the patent against Contour’s validity challenge: [2009] EWHC 26 (Pat).