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Adaptive Spectrum and Signal Alignment Inc v British Telecom Communications PLC, Patents Court, 22 July 2014, [2014] EWHC 2730 (Pat), Birss J

In a decision of 22 July 2014, the Patents Court proposed new directions in a follow-on action for a declaration of non-infringement in relation to a product that had been modified following a finding of infringement. Such directions were necessary to allow amendment of the pleadings to address a point of alleged infringement relating to a different part of the system that had not been raised previously.

Following a decision of the Patents Court in December 2013 that BT’s Next Generation Access (NGA) system infringed ASSIA’s ‘790 patent, BT modified its system in a way in which it contended did not infringe the patent. In a hearing in January 2014, the Court allowed BT to request a declaration of non-infringement (DNI) by amendment of the existing pleadings (which the Court itself described as “a massive indulgence”). Directions were ordered and the original injunction stayed pending the outcome of the appeal or the outcome of the request for the DNI.

In the intervening period, it became clear from the amended Product and Process Description filed by BT and its Responses to Requests for Information that not only was there a question of infringement relating to the system modification made by BT, a new question of infringement arose in relation to an entirely different part of BT’s NGA system, not considered previously: ASSIA claimed infringement by BT’s Service Profile Table (SPT).

At the recent hearing on 22 July, BT argued that ASSIA were in breach of the January order for directions for not fully particularising in its amended pleadings why the SPT infringed. ASSIA argued that BT had not in its amended pleading seeking a DNI identified the relevant integers of claim. The Court determined that characterising ASSIA’s actions as a breach of the order was “unreal” in the circumstances and instead sought to resolve matters by giving further directions to trial. The Court approved the parties’ agreement that no expert or fact evidence may be adduced and that BT may amend its pleading to include a further version of the NGA system (albeit while noting that this may be problematic in the future). In addition, it ordered that in the circumstances, ASSIA must plead its infringement case as it relates to the SPT in advance of any pleading amendment by BT.

Read the decision here.

Head note: Claire Phipps-Jones