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You are here: BAILII >> Databases >> England and Wales Court of Appeal (Civil Division) Decisions >> Vodafone Group Plc & Ors v IPCom GmbH & Co KG [2023] EWCA Civ 113 (10 February 2023) URL: https://www.bailii.org/ew/cases/EWCA/Civ/2023/113.html Cite as: [2023] EWCA Civ 113 |
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Strand, London, WC2A 2LL |
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B e f o r e :
LADY JUSTICE ASPLIN
and
LORD JUSTICE ARNOLD
____________________
(1) VODAFONE GROUP PLC (2) VODAFONE LIMITED (3) VODAFONE UK LIMITED |
Applicants |
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- and - |
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IPCOM GMBH & CO KG |
Respondent |
____________________
Brian Nicholson KC and Adam Gamsa (instructed by Bristows) for the Respondent
Hearing dates : 02/02/2023
____________________
Crown Copyright ©
Lord Justice Lewison:
Introduction and facts in outline
i) The application for permission to appeal was adjourned generally with liberty to restore, and time for making the application and for the application to amend was extended.
ii) The parties were directed to consider whether it was appropriate in the first instance to apply to this court to vary or discharge the whole or any part of its order.
The more detailed procedural history so far
The problem
i) An application under CPR rule 3.1 (7) to revoke or vary the orders made by this court and Recorder Campbell QC.
ii) An application to re-open the order of this court under CPR rule 52.30.
The rules
"A power of the court under these Rules to make an order includes a power to vary or revoke the order."
"(1) The Court of Appeal or the High Court will not reopen a final determination of any appeal unless—
(a) it is necessary to do so in order to avoid real injustice;
(b) the circumstances are exceptional and make it appropriate to reopen the appeal; and
(c) there is no alternative effective remedy."
The effect of revocation of the patent
"[35]. … Accordingly, where judgment is given in an English court that a patent (whether English or European) is valid and infringed, and the patent is subsequently retrospectively revoked or amended (whether in England or at the EPO), the defendant is entitled to rely on the revocation or amendment on the inquiry as to damages.
[36] Once the inquiry is concluded, different considerations will arise. There will then be a final judgment for a liquidated sum. At common law, that judgment could be challenged on the ground that the patent had later been revoked or amended only by way of appeal, and then only if an appeal is still open. I doubt whether an implied statutory right to reopen it could be derived from the scheme of the Patents Act 1977, but that is a question which will have to await a case in which it arises."
"On the facts of this case, Zodiac are not seeking to challenge any of the conclusions reached by the Court of Appeal in the English proceedings. They accept that they cannot say that the patent, in its unamended form, is susceptible to attack on the grounds raised in the English proceedings, or that Zodiac's product did not infringe the patent in that form, or that Virgin is not entitled to an assessment of damages. All that Zodiac are seeking to do is to contend that the damages on the assessment should be assessed at nil (or, perhaps, a nominal figure), because, as the patent has been amended in the course of the EPO proceedings, it is now retrospectively to be treated as amended, so that Zodiac's product does not infringe, and so Virgin have suffered no damage."
"[66] As to the temporal limit of Zodiac's right to rely on the amendment of the Patent in the assessment of damages, I have no doubt that they could raise the amendment until judgment for the assessed damages had been drawn up, or passed and entered to use the time-honoured legal expression. While the court would, I think, have power to refuse to do so, I would expect it normally to agree to reopen such a judgment if any revocation or amendment was raised before the assessed damages had been paid.
[67] If the Patent had been amended after the order had been formally passed and entered, but before the damages had been paid, I suspect that the only course open to Zodiac would have been to seek to appeal against the award of damages, relying on the amendment as new evidence, as strict cause of action estoppel (indeed merger) would apply. Once the damages had been paid, it seems to me that an alleged infringer would have to try and raise a restitutionary claim if it wished to recover the damages on the ground that the patent had been revoked or varied. I express no view on the strength of such a claim, which may well be highly dependent on the facts of the particular case."
i) The judge was wrong to conclude that Mylan's success in the EPO meant that Mylan were the successful parties in the English proceedings, or at least was wrong to conclude that Mylan's success in the EPO should be determinative of the incidence of costs in the English proceedings.
ii) The judge should not have reversed his previous costs order.
iii) Even if the judge was correct to conclude that Mylan were the successful parties overall, he should have made an issues-based costs order which better reflected the reasons for Mylan's overall success.
"I do not accept this argument. I will assume that the premise for the argument, namely that Mylan had to demonstrate a material change of circumstances since 16 December 2020, is correct, although the contrary is arguable given that no order had been sealed. In my view the revocation of EP702 was plainly a material change in circumstances since the Claimants' objective in these proceedings was to enforce the monopoly conferred by EP702 and thereby exclude a competitor from the market in order to be able to continue to charge a monopoly price for Circadin. The revocation of EP702 meant that the Claimants could not achieve that objective. More specifically, it meant that they could not obtain the relief against Mylan (namely an injunction, delivery up of infringing goods and an inquiry as to damages alternatively an account of profits) which they claimed in these proceedings. Both legally and commercially, therefore, revocation meant that the Claimants had failed. The fact that EP702 was revoked after the judge had given the December Judgment does not alter this."
"The question cannot depend on timing, at least if the revocation happens prior to a final order of the English court being sealed. It is the sealing of the order which matters for these purposes, because that is the stage at which the first instance court becomes functus officio (meaning that it ceases to have authority to decide the case) for most purposes and thus the stage at which considerations of finality bite. In saying this, I am deliberately leaving out of account questions, which do not arise in this case, as to the circumstances in which a final order may be re-opened. I am also leaving out of account the question, which does not arise in this case either, as to whether a party in the position of Mylan would have some other remedy if the final order was sealed before the patent was revoked."
What could Vodafone have done?
"One important factor affecting the exercise of the discretion is the extent to which refusal of a stay will irrevocably deprive a party of any part of the benefit which the concurrent jurisdiction of the EPO and the national court is intended to confer. Thus, if allowing the national court to proceed might allow the patentee to obtain monetary compensation which is not repayable if the patent is subsequently revoked, this would be a weighty factor in favour of the grant of a stay. It may, however, be possible to mitigate the effect of this factor by the offer of suitable undertakings to repay."
CPR rule 3.1 (7)
"…the words of rule 3.1(7) are wide enough to cover the case, that the overriding objective of the CPR requires that the rule be interpreted flexibly so as to do justice which might be denied to the claimant if his damages had to be assessed on a basis falsified by events."
"I am however in no doubt that CPR r 3.1(7) cannot bear the weight which Mr Grime's argument seeks to place upon it. If it could, it would come close to permitting any party to ask any judge to review his own decision and, in effect, to hear an appeal from himself, on the basis of some subsequent event. It would certainly permit any party to ask the judge to review his own decision when it is not suggested that he made any error. It may well be that, in the context of essentially case management decisions, the grounds for invoking the rule will generally fall into one or other of the two categories of (i) erroneous information at the time of the original order or (ii) subsequent event destroying the basis on which it was made. The exigencies of case management may well call for a variation in planning from time to time in the light of developments. There may possibly be examples of non-procedural but continuing orders which may call for revocation or variation as they continue—an interlocutory injunction may be one. But it does not follow that wherever one or other of the two assertions mentioned (erroneous information and subsequent event) can be made, then any party can return to the trial judge and ask him to reopen any decision. In particular, it does not follow, I have no doubt, where the judge's order is a final one disposing of the case, whether in whole or in part. …The interests of justice, and of litigants generally, require that a final order remains such unless proper grounds for appeal exist."
"[29] My conclusions are as follows. First, although Mr Stone has in his favour the description in its headnote of the Court of Appeal's decision in Roult as one about jurisdiction, I do not read the judgment of Hughes LJ (with which Carnwath and Smith LJJ agreed) as going quite that far. Nonetheless it does in the passage which I have quoted, clearly establish that, to the extent that there exists any jurisdiction in the court to review its own final order, that is not to be justified on the alternative grounds first enunciated by Patten J, and approved in Collier v Williams, in the context of procedural or other non-final orders.
[30] In my judgment once the court has finally determined a case, or part of a case, considerations of the type first identified by Patten J in Lloyds v Ager-Hanssen will generally be displaced by the much larger, if not indeed overriding, public interest in finality, subject of course to the dissatisfied party's qualified right of appeal."
"[75] In summary, the circumstances in which CPR 3.1(7) can be relied upon to vary or revoke an interim order are limited. Normally, it will require a material change of circumstances since the order was made, or the facts on which the original decision was made being misstated. General considerations such as these will not, however, justify varying or revoking a final order. The circumstances in which that will be done are likely to be very rare given the importance of finality."
"This was an issue considered in Samara v MBI & Partners UK Ltd [2016] EWHC 441. In that case, as here, there was an unsuccessful application to set aside a default judgment under CPR 13.3. A further application to do so was then made in reliance upon CPR 3.1(7) on the grounds of further evidence which had subsequently come to light. It was held that there was no power to consider a second application under CPR 13.3, that this could not be circumvented by reliance upon CPR 3.1(7) and that CPR 13 is a self-contained regime for the variation or setting aside of default judgments. We agree with that approach."
"For my part, I have had no difficulty in concluding that the power might be found in Part 3.1(7), but in no circumstances, in relation to an order of this kind, could it be exercised otherwise than in conformity with the very strict framework and conditions imposed by Part [52.30]."
"For my part, I have very grave doubts as to whether this case could be brought within CPR [52.30], particularly having regard to what Lord Woolf said about its application to a litigant who is the "author of his own misfortune". A further point, however, is whether there has, in the present case, been "a final determination" of the appeal in the sense required by paragraph 1 of the rule. It seems to me, as at present advised, that in the present case, permission to appeal having been granted and the appeal having been dismissed by consent, there has been no final determination in the relevant sense. At least as at present advised, it seems to me that a final determination, consistently with the purpose of the rule, is one where the court adjudicates finally on its merits. That has not happened in the present case."
"The strict constraints which part [52.30] imposes do not apply directly under CPR part 3. The case for inviting the court to revoke its previous order by consent is reasonably compelling."
"Therefore, unless each of these criteria is satisfied, the court has no power to reopen an appeal."
"[42] Furthermore, contrary to Mr Adams' submission, the jurisdiction for which he contends cannot be derived nor does it receive any support from the power given in CPR 3.1(7). In Tibbles v SIG plc [2012] EWCA Civ 518; [2012] 1 WLR 2591, this Court made clear that, whilst an exhaustive definition of the circumstances in which the discretion could be exercised was not possible, as a matter of principle it may normally only be exercised: (a) where there has been a material change of circumstances since the order was made or (b) where the facts on which the original decision was made were (innocently or otherwise) misstated: see per Rix LJ at [39]. Mr Adams had not addressed this principle in his opening submissions and really had no answer in reply to the point made by the Court that he could not bring this case within it.
[43] In other words, rule 3.1(7) will not avail the first defendant and any application to reopen the appeal can only be made under CPR 52.30 ."
CPR Part 52.30
"Where the alternative remedy would be an appeal to the House of Lords this court will only give permission to reopen an appeal which it has already determined if it is satisfied that an appeal from this court is one for which the House of Lords would not give leave."
Result
Lady Justice Asplin:
Lord Justice Arnold: