Kigen (UK) Limited v Thales Dis France SA
[2022] EWHC 2846 (Pat)
Lisa Dräxlmaier GmbH v BOS GmbH & Co KG
8 November 2022
[2022] EWHC 2823 (Pat)
High Court
Two companies were fighting about a patent for car blinds. One company wanted a UK court decision to help them win a case in Germany. Once the other company said they weren't going to use the patent anymore, the UK case became pointless. The judge stopped the UK case, saying it was a waste of time and money, but will decide who has to pay the legal costs.
Key Facts
- •Dräxlmaier (Claimant) sought a declaration of non-infringement (DNI) against BOS (Defendant) under section 71 of the Patents Act 1977 concerning EU patent EP 3266631 B1 for a car blind system.
- •BOS had sued Dräxlmaier for infringement in Germany, and both parties agreed the English proceedings were no longer useful.
- •BOS allowed the English patent to lapse but Dräxlmaier later revived it by paying the renewal fee.
- •Dräxlmaier initiated the English DNI proceedings without warning, aiming to use an English judgment in the German proceedings.
- •BOS subsequently offered to surrender the patent and gave an undertaking not to enforce it.
- •Dräxlmaier opposed the surrender and sought to expedite the English trial.
- •BOS eventually withdrew the German infringement proceedings due to a licensing deal.
- •Dräxlmaier's costs were £156,000, BOS's costs were significantly less.
Legal Principles
Abuse of process: Pointless and wasteful litigation
Jameel v Down Jones & Co Inc [2005] EWCA Civ 75
Abuse of process: Collateral purpose
Lonrho v Fayed (No 5) [1993] 1 WLR 1489
Section 71 DNI proceedings can be an abuse of process if pointless or for an illegitimate collateral purpose.
Patents Act 1977, section 71
Court resources should be used appropriately and proportionately.
Jameel v Down Jones & Co Inc [2005] EWCA Civ 75
A declaration under the inherent jurisdiction usually requires a useful purpose, but section 71 applications are subject to abuse principles.
CPR 3.4(2)
Outcomes
The English proceedings were stayed, not struck out.
The proceedings became pointless after BOS's actions, primarily driven by Dräxlmaier's desire to use an English judgment in German proceedings. While initially arguably legitimate, the continuation after BOS's offer to surrender and undertaking constituted an abuse or at least unwarranted use of court resources.
Costs to be determined later based on the findings of unjustified maintenance of the proceedings by Dräxlmaier, and BOS’s initial failure to engage.
Dräxlmaier's actions were deemed unjustifiable after BOS’s offer to surrender the patent, and BOS’s initial lack of engagement contributed to the litigation. The court will address costs based on these findings.