UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
5.4 Other Court Proceedings The interplay with other court proceedings, such as parallel revocation/infringement actions and the issuance of anti-suit injunctions, can signifi- cantly impact the course of proceedings. Parallel Revocation/Infringement Proceedings The court may consider staying infringement proceedings pending the resolution of a parallel revocation action in another forum, including in the European Patent Office; however, it is not a requirement, and often cases are not stayed in light of parallel proceedings (eg, Neurim and Anor v Generics (UK) Ltd and Anor [2021] EWHC 2897 (Pat)). Anti-Suit Injunctions Whilst foreign anti-suit injunctions are not auto- matically binding on the courts in England and Wales, their existence may prompt a careful examination of jurisdictional issues and fairness within the ongoing proceedings in England and Wales. The courts will assess the relevance and validity of such injunctions, taking into consid- eration their potential impact on the current liti- gation in determining whether or not to enforce them. Influence on Current Proceedings The influence of parallel actions and anti-suit injunctions in patent litigation in England and Wales depends on the specific circumstances of each case. Courts strive to balance efficiency in dispute resolution with the principles of fair- ness in furtherance of the overriding objective.
ment (pursuant to Section 61 of the Patents Act 1977) include: • injunction (preliminary injunctive relief and final injunctive relief); • damages or an account of profits; • order for delivery up and destruction; • relief for infringement of a partially valid pat- ent; • certificate of contested validity; and • costs. Injunction Injunctions are discretionary in England. The fac- tors relevant to exercising that discretion in a preliminary injunction context are addressed in 2.7 Interim Injunctions . Patents provide exclu- sionary rights and if a patent is shown to be valid and infringed, the court will typically grant a final injunction (the effect of which might be stayed pending any appeals). However, as injunctions are discretionary, the court will consider if an injunction is an appropriate remedy or whether, for example, a licence would be more appro- priate, proportionality and other considerations, including public interest factors. A specific type of injunction unique to patent litigation relating to standards-essential patents is the “FRAND injunction”, which bites unless and until the infringer enters or undertakes to enter into a FRAND licence. Damages or Account of Profits A successful claimant is entitled to elect for damages or an account of profits, but not both. A court may use its discretion to award damages instead of an injunction. In taking into account damages, a successful claimant should be put in the same position as they would have been if the infringement had not occurred, provided that the claimant proves its losses are foreseeable, caused by the wrong, and not excluded from
6. Remedies 6.1 Remedies for the Patentee
The remedies that a patentee may seek and that may be granted on a finding of patent infringe-
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