Independent consultant held jointly liable for infringement

The Patents Court for England and Wales gave a ruling this Wednesday in MMI Research Ltd v Cellxion Ltd and others [2009] EWHC 418 (Pat), a decision of Mr Justice Floyd.  This dispute related a European patent (UK) which MMI co-owned, with R&S (the fifth defendant), for a "Method for identifying a mobile phone user or for eavesdropping on outgoing calls". The patent involved a way of breaking through the global system for mobile communications (GSM), which was intended to increase the security of mobile phone communications from unauthorised tracking of users and tapping of their conversations while enabling law enforcement authorities to gain access to the system. MMI sued CellXion for infringement through the manufacture of its DX918 product. CellXion counterclaimed for invalidity.

Floyd J held the patent valid and infringed. He also held the sixth defendant -- a former employee, director and shareholder of MMI who became an independent consultant to other infringing companies -- to be jointly liable for their infringements. On this Floyd J said (at [155] and [156]):

"I was not addressed on the principles applicable to holding an individual jointly liable with a company for acts of the company. For present purposes I take the principle to be that an individual will be so liable if, sharing a common design with the company, he intends and procures that the acts complained of by way of infringement take place.

I think it is clear on the facts of this case that Mr Timson shared a common design with the CellXion companies to market the DX918, and intended and procured the sales which are the subject of the allegation of infringement. He actively participated in the sales effort. Above all others he knew exactly how the device operated, and that, at least some of the time, it would operate so that real power caused the device to re-select the DX918. He is jointly liable with the CellXion companies".

While instances of a company director of an infringing defendant being held jointly liable are not uncommon, a finding that an independent consultant is jointly liable for patent infringement is a far rarer occurrence. PatLit wonders whether non-UK readers of this blog would like to share the experiences relating to their own jurisdictions.