In this case, the defendant’s bag for holding linked rounds of ammunition was held by the Patents Courts to fall within the scope of a patent licensed from the claimant, under the doctrine of equivalents, but refused an inquiry as to damages as no loss could be identified. 

 

Her Honour Judge Melissa Clarke found the bag constituted an immaterial variant after applying the “Actavis” questions. Please see our case note for more details:UK Supreme Court grasps nettle of doctrine of equivalents 

 

Furthermore, HHJ Clarke found that the bag was royalty-bearing pursuant to the licence agreement, even if the patent were eventually determined by the UKIPO to be invalid.

 

HHJ Clarke refused an application for an inquiry as to damages. Due to the absence of any identification of the relevant type of damage flowing from the breach of the licence agreement, the judge decided that ordering such an inquiry would be “disproportionate and outwith the overriding objective”.

 

Case link: Excel-Eucan v Source Vagabond Systems

 

Our full article has been published in the Journal of Intellectual Property Law and Practice: Volume 15, Issue 4, April 2020, Pages 229–232