In the recent patent infringement case of Lufthansa Technik AG v Astronics Advanced Electronic Systems and others [2020] EWHC 83 (Pat), Judge Nugee did not allow an American Defendant to withdraw an admission that it had supplied goods in the UK which were alleged to have infringed the Claimant’s patent. The reasoning behind this was that prejudice would be caused to the Claimant if the Defendant was allowed to withdraw the admission.

The US Defendant had admitted that it had supplied goods in the UK which were alleged to have infringed the Claimant’s patent.  The US Defendant applied to the Court to withdraw that admission because further investigations had shown that title to the goods had passed before the goods were supplied in the UK and that this was therefore analogous to importation which would not be an infringing act. 

The Civil Procedure Rules, which govern all litigation in England and Wales, state that the Court has to consider “any prejudice that may be caused to any person if the admission is withdrawn”.  Judge Nugee held that the practical effect of allowing the US Defendant to withdraw its admission would be that the Claimant would be faced with the possibility of losing some two years’ worth of damages.  Although the Judge said that the Defendant had an arguable case that it was not, as a matter of law, liable for supply in circumstances where title in the goods had passed to the purchaser in the US, the Judge held that it was not obvious that “supply” meant the same as “import” under the provisions of the Patents Act 1977. 

Although there was potential prejudice to the Defendants in not being able to run a point that had a real prospect of success, the Judge held that this had to be balanced with the fact that this was not the Claimant’s only route to making the US Defendant liable for supplying the allegedly infringing goods.  The Claimant had the possibility of suing the UK recipients of the goods, some of whom had been identified by the Defendant, and it could seek to make the Defendant jointly responsible with the recipients.  The Judge said the Claimant had a reasonable chance of success in doing this. 

Another factor which the Judge took into account when refusing the Defendant permission to withdraw its admission was the late stage in which the Application to the Court had been made.  In this case, the Defendant’s Application had been made just three weeks before the trial date.  The Judge held that this issue was related to the question of liability that the Claimant was entitled to have resolved at the upcoming trial. 

The take home points from this case are:

  • Parties need to think carefully before making admissions in any Court pleadings which are normally prepared at the beginning of this case; and
  • If a party wants the Court’s permission to withdraw an admission, any Application to the Court should be made promptly and certainly not in the lead up to trial.

Our specialist intellectual property disputes team routinely advises on a broad range of disputes relating to patents along with other intellectual property disputes relating to copyright, trademarks, passing off, design rights, confidential information, reputation management and data protection issues.  The intellectual property team at Myerson is regularly instructed by clients from the arts, media, textile and clothing sectors in the UK and internationally.  If you need advice on patent or other intellectual property infringements, please do not hesitate to contact a member of the team today.    

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