UK Law and Practice Contributed by: Nicola Dagg, Jin Ooi, Ray Cheng and Nevyn Fournel, Kirkland & Ellis
If the defendant is not the patentee, a successful defendant in an infringement action would also be entitled to recover their costs (as referred to in 6.1 Remedies for the Patentee ), either pro- portionate and reasonable or on an indemnity basis. Similarly, as discussed in 6.1 Remedies for the Patentee , if a defendant is successful in partly invalidating the patent, the defendant only has to pay damages or an account of profits with respect to the parts of the patent found to be valid. If the defendant has been subject to an interim injunction, they may be entitled to claim dam- ages on any cross-undertaking after an interim injunction is discharged. The court will assess the damages “upon the same basis as that upon which damages for breach of contract would be assessed if the undertaking had been a contract between the plaintiff and the defendant that the plaintiff would not prevent the defendant from doing that which he was restrained from doing by the terms of the injunction” (see Smith v Day (1882) 21 Ch D. 421 per Brett LJ at p. 427). If the defendant or its customers has been the subject of threats, there also exist remedies for groundless threats of infringement proceedings, whereby the alleged infringer can seek damag- es, an injunction to prevent further threats, and a declaration that the threat lacked justification. 6.3 Types of Remedies The types of remedies available in patent litiga- tion have been set out in 6.1 Remedies for the Patentee and 6.2 Rights of Prevailing Defend- ants . 6.4 Injunctions Pending Appeal The court has discretion as to whether or not to stay an injunction pending appeal, and it applies the balance of convenience test in exercising its
discretion. For example, in the case of public inconvenience, the immediate operation of an injunction may be suspended to minimise such inconvenience or to avoid extensive unemploy- ment. Where a stay is granted for an injunction pending appeal, it is generally ordered that it be stayed for such time to enable the defendants to give notice of appeal and to continue in force until the appeal has been pursued with due diligence. The appellant, subject to the stayed injunction, must keep a record of their accounts relating to the disputed product/process or otherwise make payments into escrow. The patentee is often giv- en the option of whether to enforce the injunc- tion pending appeal (subject to an appropriate cross-undertaking in damages). The court has taken the following considerations into account when deciding whether to exercise its discretion to grant a stay. • Whether the party seeking the stay and the appeal (if unsuccessful) will be in the same position as if they had not sought the stay, and whether the patentee that was successful at first instance would be in the same posi- tion as if the appeal was upheld and the stay had not been granted (see Kirin-Amgen Inc v Transkaryotic Therapies Inc [2005] F.S.R. 44). • The economic consequences to each party of the injunctive relief (HTC Corp v Nokia Corp [2013] EWHC 3778 (Pat), [2014] R.P.C. 30). • Whether the party requesting the stay is willing to provide financial relief (Adaptive Spectrum and Signal Alignment Inc v British Telecommunications Plc [2014] EWCA Civ 1513).
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