Technetix BV & Anor v Teleste Ltd

A patentee’s selection of the claims on which it intends to rely at a case management conference is generally an enforced selection of its best case, not an admission that the remaining claims are invalid. If the selection is treated as an admission, withdrawal is governed by CPR 14.1(5) and the factors in paragraph 7.2 of Practice Direction 14. The court must assess all the circumstances, including prejudice, the stage of proceedings, prospects of success and the administration of justice. Late procedural change and wasted costs may be outweighed by the serious prejudice caused if refusal would effectively determine the claim.

This was a pre-trial review in a patent action. Technetix sought permission to delete claim 1 and amend claim 2 so that it became the new claim 1. It also sought time to serve expert evidence in reply. At an earlier case management conference, Technetix had stated that only claim 1 was independently valid. Teleste argued that this statement admitted that claim 2 was not independently valid and that permission to amend therefore required withdrawal of an admission. Technetix contended that the statement was only a procedural selection of its best case. The central issues were whether an admission had been made and, if so, whether it should be withdrawn.

1. The court held that identifying the claims with independent validity was generally better characterised as a patentee’s enforced selection of its best case for procedural economy. It did not ordinarily amount to an admission that the other claims were invalid. The analogous selection of a short list of prior-art items by a party seeking revocation did not constitute an admission that the abandoned items were ineffective.

2. Alternatively, if Technetix’s statement were treated as an admission, permission to withdraw it was required under CPR 14.1(5). The court applied the non-exhaustive factors in paragraph 7.2 of Practice Direction 14, including the grounds for withdrawal, the parties’ conduct, prejudice if permission were granted or refused, the stage of proceedings, prospects of success and the interests of the administration of justice.

3. The absence of evidence explaining the change of position was an important consideration, but it was not decisive. Technetix’s conduct had been imperfect, and the application was late and likely to cause wasted costs. However, Teleste could reasonably address the change before trial, and the court could not conclude that the proposed claim 2 case was hopeless. Refusal could cause serious prejudice by effectively preventing consideration of claim 2 at trial.

4. Permission was therefore granted for Technetix to proceed with its unconditional application to amend the patent, whether or not the application accurately involved withdrawal of an admission. Directions were to be considered to minimise wasted costs, particularly those affecting Teleste.