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Zipher Ltd v Markem Systems Ltd, Markem Technologies Ltd [2009] EWCA Civ 44

Case Summary  |  Judgment  |  10 February 2009

 

In January 2009 Adrian Speck appeared as junior counsel for the appellant and Richard Meade QC appeared as leading counsel for the respondents. The trial at first instance was a claim for infringement brought by Zipher against Markem in which Markem brought a counter claim for invalidity of a number of Zipher's patents. Floyd J held that Zipher's patents were invalid. However, another point raised at trial was an argument made by Markem that Zipher had given an undertaking at a hearing in 2003 in front of Judge Fysh QC such that it was precluded from alleging that any claim wider than claim 5 of a particular UK Patent and its international equivalents (the PCTs) were valid or infringed. Floyd held that such an undertaking had been given in relation to the UK Patent and then held, in a subsequent judgment, that the undertakings also extended to the PCTs. The issue for the Court of Appeal was whether there was binding undertaking given to the High Court even though it was never committed to writing, and, if so, whether it was binding even though the case subsequently went to the Court of Appeal. The Court allowed the appeal and held that the statements in the hearing in front of Fysh J constituted an offer to give undertakings which the Judge did not accept, and that, without a statement to the contrary, the undertakings were not be revivable at the appeal stage.