Vodafone Group Plc & Ors v IPCom GmbH & Co KG

The general case-management power in rule 3.1(7) of the Civil Procedure Rules 1998 cannot be used to reopen a sealed final order determining an appeal on its merits. A party seeking to challenge such an order must proceed under rule 52.30 or appeal to the Supreme Court.

The possibility of varying a continuing order does not confer a general jurisdiction to reverse completed final orders because later events have undermined their factual basis. Where retrospective patent revocation occurs while an inquiry into damages remains pending, the revocation may be relied upon in that inquiry. It does not, without an available procedural route, undo a completed costs order. Even where a power to reopen might exist, relief may properly be refused if the applicant failed to seek a stay, repayment undertaking, contingent order or liberty to apply against a foreseeable revocation.

IPCom alleged that Vodafone had infringed its European patent. The trial court held the patent valid and partly infringed, subject to a Crown use defence. The Court of Appeal later dismissed Vodafone’s validity appeal, allowed IPCom’s appeal on Crown use, extended the declarations of infringement and ordered Vodafone to pay additional costs. Permission to appeal was sought from the Supreme Court.

While that application remained pending, the European Patent Office’s Technical Board of Appeal retrospectively revoked the patent. Vodafone then asked the Court of Appeal, under rule 3.1(7) of the Civil Procedure Rules 1998, to vary or revoke the sealed orders concerning infringement, the damages inquiry and costs. The central issue was whether rule 3.1(7) permitted the court to reopen its final merits order, or whether Vodafone’s remedies were confined to rule 52.30 or an appeal to the Supreme Court.

1. The application was dismissed unanimously. Rule 3.1(7) of the Civil Procedure Rules 1998 could not be used to reopen the Court of Appeal’s sealed final order determining the earlier appeal on its merits. Its overwhelming purpose and the thrust of the authorities confined it to case-management and non-final orders, subject only to the limited possibility of varying a continuing order such as a final injunction. Finality displaced the ordinary grounds of material change of circumstances or factual misstatement: paras [35]–[56].

2. Where rule 52.30 is potentially engaged, there is little, if any, scope to avoid its strict conditions through rule 3.1(7). Vodafone’s available procedural routes were therefore an application under rule 52.30 or an appeal to the Supreme Court. The Court preferred Ceredigion Recycling & Furniture Team v Pope [2022] EWCA Civ 22 to the inconsistent approach suggested by McWilliam v Norton Finance UK Ltd [2014] EWCA Civ 818: paras [45]–[56].

3. Retrospective revocation treats a patent as never having existed. While an inquiry into damages remains pending, the alleged infringer may rely upon revocation to contend that the patentee suffered no loss. That consequence did not itself reverse the completed costs order. Apart from the damages inquiry, the earlier order had been fully worked out: paras [20]–[30], [55].

4. Lewison LJ observed, obiter, that a pending application for permission to appeal to the Supreme Court does not automatically exclude jurisdiction under rule 52.30. The question is whether the further appeal is a real or merely theoretical remedy. The Court of Appeal should not second-guess the Supreme Court where the prospects fall between those categories. Jurisdiction under rule 52.30 would probably arise or revive if permission were refused or the application were withdrawn: paras [57]–[64].

5. Asplin and Arnold LJJ further held that, even if jurisdiction existed, the discretion should not be exercised. Revocation in the European Patent Office proceedings was foreseeable. Vodafone could have sought a stay, adjournment, repayment undertaking, contingent costs order or liberty to apply, but failed to protect itself. It was therefore the author of its own misfortune: paras [31]–[34], [66]–[67].

1. Supreme Court: Vodafone’s application for permission to appeal, and its application to amend the proposed grounds following revocation of the patent, were adjourned generally with liberty to restore. The applications remained unresolved when the present judgment was given.

2. Court of Appeal: In the present decision, [2023] EWCA Civ 113 , the court unanimously dismissed Vodafone’s application under rule 3.1(7) of the Civil Procedure Rules 1998 to vary or revoke the sealed final orders made in the earlier appeal.

3. Earlier Court of Appeal proceedings: The court dismissed Vodafone’s appeal on validity and IPCom’s appeal concerning construction, but allowed IPCom’s appeal on Crown use. It enlarged the declarations of infringement and increased the costs payable by Vodafone. The neutral citation of that judgment is not stated in the supplied judgment.

4. Patents Court: Recorder Campbell QC held the patent valid and partly infringed, but accepted Vodafone’s Crown use defence. He ordered an inquiry into damages or an account of profits and ordered Vodafone to pay 60 per cent of IPCom’s costs. The citation of the merits judgment is not stated in the supplied judgment.