Starsight Telecast, Inc & Ors v Virgin Media Ltd & Ors

Where a pending central amendment application may alter the form of a European patent before trial, the court may adjourn the trial to avoid deciding the revocation claim on a legally false or uncertain basis. The possibility of amendment does not, however, automatically justify an adjournment. The court must consider the patentee’s conduct, the explanation for delay, expedition sought before the European Patent Office, prejudice, wasted costs and whether infringement remains in issue. A party cannot ordinarily be compelled to apply for an English amendment which it does not wish to pursue, absent a demonstrated jurisdiction to make that order. Case-management powers may resist an amendment application used as a device to derail proceedings.

These related patent claims concerned revocation of a European patent relating to television set-top-box technology. The infringement claim had been discontinued, and the patentee had given assurances concerning current and future products.

Shortly before trial, the patentee made a central amendment application to the European Patent Office under Article 105a of the European Patent Convention, without complying with the applicable notice requirement. The defendants sought an order requiring an English amendment application under section 75 of the Patents Act 1977; the patentee sought an adjournment until the European application was determined. The central issue was whether the trial should proceed when the final form of the patent remained uncertain.

1. Trial vacated. The trial concerning the patent was adjourned, subject to terms requiring the patentee to seek expedition, prosecute the European amendment application promptly, keep the defendants informed, and pay the wasted costs.
2. The pending central amendment application created a real uncertainty about the form of the patent to be considered in the revocation claim. The European Patent Office might allow amendments in a form different from that proposed. Proceeding before the final form was known risked deciding the case on a legally false basis. The reasoning in Samsung Electronics Company Limited and Apple UK Limited [2014] EWCA Civ 250 applied by analogy.
3. The patentee’s conduct strongly militated against relief. The application was late, inadequately explained, and not accompanied by a request to the European Patent Office for expedition. Those matters would have justified refusing the patentee’s application if its own position and conduct had been decisive.
4. The defendants’ proposed solution was rejected. No jurisdiction had been demonstrated to compel an English amendment under section 75 of the Patents Act 1977. It was not an abuse for the patentee to defend the unamended patent, and it was inappropriate to strike out that defence merely because the patentee preferred to pursue the European procedure.
5. A late central amendment application does not automatically secure an adjournment. The court’s case-management powers may defeat an application used as a device to manipulate the trial timetable. The position may differ where infringement remains in issue, where there is a pressing need for relief, or where the patentee cannot justify the delay or fails to seek expedition.
6. The absence of a demonstrated immediate need by the defendants to clear the path for a particular development, the discontinuance of infringement, and the assurances given by the patentee supported the adjournment in this case. The June trial slot was preserved for the other patent.