Zipher/Markem patent saga continues

The names of Zipher and Markem are not unknown to readers of this weblog (see earlier posts here, here and here ), and the IPKat is sad to welcome them back today, following another outing in the Patents Court for England and Wales yesterday. Readers may recall the words penned by another member of the IPKat team in June of this year when he wrote, following a 469 paragraph judgment delivered after a ten-day hearing:

"The IPKat is astonished and saddened by the enormous effort (and money, obviously) expended over what in the end appear to be fairly threadbare patents. He can only conclude that this is a case where, over more than five years, the lawyers involved have been given pretty much free rein to use whatever arguments they could think up and pursue at all costs, but at no point does there appear to have been any realistic attempt made by either side to see the wood for the trees, and realise that there was in the end nothing worth fighting for".

Well, the fight continues. In Zipher Ltd v Markem Systems Ltd and another [2008] EWHC 2078 (Pat), not yet available on BAILII but noted with extreme brevity by LexisNexis Butterworth's subscription service, Mr Justice Floyd has returned to an issue that is mentioned in his earlier decision in June -- the necessity (or otherwise) of Markem being given injunctive relief in respect of an undertaking which, Zipher had argued, was not really an undertaking not to amend one of its patents but a mere concession that it might not be entirely valid as it stood.

In short, Zipher sued Markem for infringement of three of its patents. Following the court's determination that Zipher's proposed amendments to one of those patents were precluded by an undertaking it gave the court in the course of earlier entitlement proceedings, various issues arose in relation to the scope of an injunction--which was apparently to be stayed--to which Markem were entitled in support of that undertaking.

Floyd J ruled that the terms of the injunction should be no wider and no narrower than those of the undertaking, on a proper construction of the undertaking itself. This was because it was highly undesirable for a claimant to need to look both to the terms of the injunction and separately to the wording of its undertaking before it could establish the legality of any course of action that it proposed to take.

The IPKat wonders if that was all the judge was asked to decide, seeing as it would be difficult to reach any other conclusion in the absence of solid precedent to the contrary. The Kat does not know enough about the business history of Zipher and Markem to appreciate precisely why this litigation has been so bitterly fought. he does however wonder if the totality of this dispute ever added up to a sensible business decision. Merpel adds, but isn't patent litigation an imaginative, if costly, form of advertising of one's innovative credentials?

UPDATE (4 September 2008): The judgment is now available in full from BAILII here.