High Court Judgment Template s14

Neutral Citation Number: [2014] EWHC 2196 (Pat)

Case No: HP13A04705 IN THE HIGH COURT OF JUSTICE CHANCERY DIVISION PATENTS COURT

Royal Courts of Justice Strand, London, WC2A 2LL

Date: 03/07/2014

Before:

MR. JUSTICE BIRSS ------Between:

NAMPAK PLASTICS EUROPE LIMITED Claimant - and - ALPLA UK LIMITED Defendant

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Iain Purvis QC and Anna Edwards-Stuart (instructed by Bristows) for the Claimant Adrian Speck QC and Henry Ward (instructed by TLT) for the Defendant

Hearing date: 20 June 2014 ------Approved Judgment I direct that pursuant to CPR PD 39A para 6.1 no official shorthand note shall be taken of this Judgment and that copies of this version as handed down may be treated as authentic.

......

MR. JUSTICE BIRSS MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

Mr Justice Birss:

1. This is a patent case. The patent is GB 2 494 349 entitled “Plastic Container”. It is owned by Nampak. The defendant is Alpla.

2. The parties are rivals in the plastic milk bottle business. Although each plastic bottle sells for very little, tens of millions of bottles are supplied in the UK every day. It is big business. Nampak contends that Alpla’s bottle called the ECO 1 infringes the patent. Alpla denies infringement and contends that the patent is invalid. There is to be a trial of those issues in January 2015.

3. However, Alpla has also produced a design which it contends does not infringe on any view. It is called the ECO 2. It is a modification of the ECO 1. Alpla brought a claim for a declaration on non-infringement under Section 71 of the 1977 Patents Act. Alpla now applies for summary judgment on that claim under CPR Part 24. The question before me is whether to give summary judgment on the declaration in relation to the ECO 2 product.

4. A point arises on the procedural history as follows. Nampak’s position in its statements of case is that it does not admit that the ECO 2 does not infringe. Following a Request by Alpla for Further Information, Nampak stated that it has no positive case on the point at all, including on the question of whether Alpla is entitled to seek a declaration of non-infringement.

5. Having heard this application it is clear that the position as stated in Nampak’s pleadings is simply wrong. In fact, Nampak does have a case that the ECO 2 bottle infringes. Its excuse for saying nothing was ostensibly that the information about the ECO 2 provided by Alpla had been vague. Even if that was correct, it was no excuse. In truth Nampak denies that Alpla are entitled to a declaration and has a positive case of infringement. Nampak’s position is not simply one of non-admission. Its positive case, at its lowest, is that products consistent with the ECO 2 drawings infringe the patent. The vagueness point was that, at least before this hearing, Nampak appeared to take the view that other products also consistent with the drawing might not infringe. However as Nampak’s case was articulated before me, it was that the product in the drawing infringes. The alleged ambiguity was a debate about whether a straight line in the drawing was very straight indeed or very slightly curved and if so how much. But even if that ambiguity was part of what Nampak thought its case was, its statements of case were wholly insufficient.

6. It was open to Alpla to press strongly at this hearing that Nampak should be held to its position in its statements of case, that it has no positive case. If I had taken that approach then the hearing would have been extremely short and Nampak would have lost. However by the time the matter came before me that would not have been a fair approach. If Alpla’s summary judgment application were to be dismissed, it would be necessary for Nampak to amend its pleadings. It might be thought that Alpla risked doing Nampak a favour by bringing this application. If at trial Nampak had tried to adopt the stance it adopted before me, it would very likely have been refused permission to do so. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

CPR Pt 24, summary judgment

7. Summary judgment is judgment which is given in a party’s favour without a trial. It will be given in a claimant’s favour if the defendant has no real prospect of successfully defending the claim or issue (r24.2(a)(ii)). For the purpose of this application for a declaration of non-infringement Alpla is the claimant and Nampak is the defendant. The relevant principles were set out by Lord Hobhouse in the House of Lords in Three Rivers DC v Bank of England [2001] UKHL 16:

“The criterion which the judge has to apply under Part 24 is not one of probability; it is absence of reality. The majority in the Court of Appeal used the phrases “no realistic possibility” and distinguished between a practical possibility and “what is fanciful or inconceivable”. ([2000] 2 WLR p.91G) Although used in a slightly different context these phrases appropriately express the same idea.”

8. The evidential burden in an application for summary judgment is firmly on the Applicant. See ED&F Man Liquid Products v Patel [2003] CP Reports, Potter LJ at [9]:

“ In my view, the only significant difference between the provisions of CPR 24.2 and 13.3(1), is that under the former the overall burden of proof rests upon the claimant to establish that there are grounds for his belief that the respondent has no real prospect of success whereas, under the latter, the burden rests upon the defendant to satisfy the court that there is good reason why a judgment regularly obtained should be set aside. That being so, although generally the burden of proof is in practice of only marginal importance in relation to the assessment of evidence, it seems almost inevitable that, in particular cases, a defendant applying under CPR 13.3(1) may encounter a court less receptive to applying the test in his favour than if he were a defendant advancing a timely ground of resistance to summary judgment under CPR 24.2.”

9. I was also referred to the judgment of Jacob LJ in the Court of Appeal in Saleem Khatri v Cooperatieve Centrale Raiffeisen-Boerenleenbank BA [2010] EWCA Civ 397:

“[3] … 1. The court must consider whether the defendant has a ‘realistic’ as opposed to a ‘fanciful’ prospect of success.

2. A ‘realistic’ defence is one that carries some degree of conviction. This means a defence that is more than merely arguable.

3. In reaching its conclusion the court must not conduct a ‘mini-trial’. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

4. This does not mean that the court must take at face value and without analysis everything that a defendant says. In some cases it may be clear that there is no real substance in factual assertions made, particularly if contradicted by contemporaneous documents.

5. However, in reaching its conclusion the court must take into account not only the evidence actually placed before it on the application for summary judgment, but also the evidence that can reasonably be expected to be available at trial.

6. Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without a fuller investigation into the facts at trial than is possible or permissible on an application for summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case.”

10. It is often the case that summary judgment is not suitable in patent matters. In both Strix v Otter Controls [1991] FSR 354 and Monsanto v Merck [2000] RPC 77 a patents judge at first instance awarded summary judgment on a point, only for that to be overturned in the Court of Appeal. The reasons why summary judgment is often inappropriate in patent cases were summarised in paragraph 20 of the judgment of Arnold J in Starsight v Virgin [2014] EWHC 8 (Pat), in which he said:

“As was explained in Strix and Otter Ltd and Monsanto and Merck, the reason why it is difficult to grant summary judgment in patent cases is that, in order to determine even issues of claim construction and infringement, it is necessary for the court to adopt the mantle of the person skilled in the art. For that purpose, the court needs to receive expert evidence as to the common general knowledge as to the art in question at the relevant date.”

11. However, Mr Speck reminded me that in the Court of Appeal in Virgin v Delta [2011] RPC 18, Jacob LJ said:

“[13] …Whilst the general rules as to summary judgment apply equally to patent cases as to other types of case, there can be difficulties, particularly in cases where the technology is complex. If it is, the court may not be able, on a summary application, to form a confident view about the claim or its construction, particularly about the understanding of the skilled man. On the other hand in a case such as the present, where the technology is relatively simple to understand, there is really no good reason why summary procedure cannot be invoked. No MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

one should assume that summary judgment is not for patent disputes. It all depends on the nature of the dispute.

[14] That can cut both ways, of course. If the court is able to grasp the case well enough to resolve the point, then it can and should do so—whether in favour of the patentee or the alleged infringer.”

12. In light of all these statements, I will only add one of my own. I agree with Arnold J’s summary of the reasons why summary judgment is difficult in patent cases. These reasons do not mean that a patentee can resist an application for summary judgment simply by advancing unspecific assertions about the need for expert evidence. If a patentee wishes to submit that a matter needs to go to trial for the reason explained by Arnold J, he or she needs to explain with at least some specificity what fact or what expert evidence or what common general knowledge is to be relied on. Generalities are not good enough. Apart from anything else it may turn out that once a point is identified, there is no dispute on it and no need to prolong the commercial uncertainty by waiting for a trial.

Evidence

13. Before me I had three witness statements from Mr Orchison, the solicitor for Alpla and one witness statement from Mr Pinckney the solicitor for Nampak. Mr Orchison put in the drawings his clients rely on for the ECO 2 and also explained the commercial imperatives why his client wishes to sort this matter out now if it was at all possible. Mr Pinckney’s evidence explained Nampak’s case why the ECO 2 infringes the claim or may infringe the claim and raises various questions which Nampak say need to be answered in order to decide the question.

14. Mr Orchison’s evidence articulates good commercial and practical reasons why, if possible, the status of the ECO 2 should be decided on here and now. However just because it is commercially desirable to have an early judgment on the point does not mean that it is possible to decide it under the summary judgment procedure.

The parties’ positions

15. Alpla says its case is simple and turns on a point of construction of the patent. No expert evidence is needed, and it submits that none has been suggested with any specificity by Nampak.

16. Nampak says the evidence does not sufficiently describe the product in relation to which a declaration is sought and that evidence from experts and even perhaps experiments will be needed. However Mr Pinckney’s evidence and Nampak’s skeleton argument only dealt with this in general terms. In argument the clearest concrete point identified by Nampak’s counsel was that expert evidence was required relating to the behaviour of the bottle on a packing line. I will return to that below.

17. A further question was about whether the product Alpla actually intended to sell was in accordance with the ECO 2 drawings. In my judgment there is nothing arising out of this. In fact I think it arose from a misunderstanding about a reference to a modification of a mould. But in any case if, for the sake of argument, the court was MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

able to make a declaration of non-infringement on the materials now before the court but it turned out later that a product being sold by Alpla was not in accordance with those materials, then all that means is that the declaration does not cover that later product. Related to this was an argument about whether the declaration sought was hypothetical. I am satisfied on the evidence that the declaration sought by Alpla is not hypothetical, it is about a product (in various sizes) which Alpla wishes to sell.

The Patent

18. The patent claims priority from an earliest priority filing on 20 April 2010 and was granted on 24 July 2013. It describes known milk containers and explains (p1, line 17) that there is a desire to make such containers as light as possible while ensuring that they remain fit for purpose in delivering the product in good condition for consumers. Nampak explained that the weight and therefore the volume of plastic of milk containers is a crucial element in the price and has a significant environmental impact. Even a few tenths of a penny can make a big difference given the number of cartons which are supplied. The purpose of the invention (p2 ln9) is to reduce the weight of standard capacity milk containers without compromising their structural integrity.

19. A problem with the existing blow moulded plastic containers is described by reference to a diagram of an existing container which is shown at Fig. 16. The problem is that the existing approach to blow moulding often leads to aggressive stretching and thinning of the parison wall in the corners which are furthest away from the centre of the item, which are corners of a broadly rectangular shape. The “parison” is the lump of plastic which is blow moulded to make a bottle.

20. The invention provides a container with a footprint that overcomes or mitigates this problem (p3, line 8). The document includes three specific embodiments of the invention. They are containers shown in figures 1 to 3, figures 4 to 9 and figures 10 to 15. The general part of the description refers to various “aspects” which relate at least to some extent to those three embodiments.

21. The first aspect is described starting at p3, line 11. It corresponds to Figures 1 to 3. In that footprint the container is symmetrical about a transverse axis extending in a direction perpendicular to the part line. The part line is the line of parting of the mould. This can be seen in Fig. 3: MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

22. The part line in figure 3 is the line B-B.

23. The patent explains (p3, line 22) that in this shape the radial distance of the footprint from the centre point (X) is greatest at the point of intersection between the wall and the part line rather than at a location away from the part line as would be the case in a conventional rectangular or square container. This reduces the tendency for localised thinning of the wall thickness in the critical areas during blow moulding.

24. The specification then describes various “exemplary embodiments” which are really further features of the Fig. 3 bottle. The ends may be generally curved or they may consist of two curved or radiused sections separated by a straight section (p4, line 23).

25. Page 5, line 20 starts describing another aspect of the invention which is similar to the first one and still relates to Fig. 3. Another aspect is described starting at p 6, line 6.

26. The next important further aspect starts at p6, line 20. This relates to the second embodiment shown in Fig. 4 to Fig. 9. Representative figures are 8 and 9 which show the plan view from above and below:

27. This aspect is described at p7, line 5 as being generally octagonal. Again the patent explains at p7, line 13 that the radial extent of the footprint from the centre point is greatest along the part line. Further aspects are described which are not pertinent to the questions I have to decide and then at p8, line 15 the document states that “preferably the container has a pouring aperture and the length of the sides of the MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

first pair is less than the diameter of the pouring aperture”. The reference here to a first pair is a reference to a pair of opposing sides which intersect the part line. In figure 9 this would be the pair of sides marked 152. The specification does not explain what the purpose of this feature is.

28. Further aspects are then described and the idea of truncated corner regions is introduced. This idea is to use a footprint in which what would otherwise have been the right angled or rounded corners of the kind used in the known bottles are truncated. The images of the third embodiment (figures 10 to 15) show a schematic representation of the truncation. The plan views from above and below of this container are figures 14 and 15 as follows:

29. At p10, line 9 the patent explains that:

“…by effectively removing the four corners of a conventional rectangular footprint, the container in accordance with this aspect of the invention exhibits less tendency for localised thinning of the wall thickness at the corner regions (if formed by blow moulding), compared with containers having conventional rectangular footprints, e.g. of the kind shown in Fig. 16.”

30. The truncation of the corners means that the container has four new “minor” sides which each extend at an angle to the part line (p11 ln1), producing a total of eight sides. In other words the footprint could be defined by removing a generally triangular portion (including the apex) from the corner regions of what would otherwise be a conventional rectangular footprint (p11 ln9).

31. After this general discussion, at page 12 the patent turns to consider the specific embodiments in more detail. I have included representative figures showing those three embodiments already.

32. At p15 line 20 the specification explains relating to Figure 3 that the side surfaces may define a slight curvature or other nonlinear configuration whilst retaining at least a general alignment with the part line. The sides being considered here are the faces 114 and 116. By retaining this general alignment of these sides with the part line, the bottle is maintained in alignment relative to the guides on the automatic filling line as the bottle travels along the line. Thus the reason these sides are generally straight is to allow for alignment on automatic filling lines but the document is teaching that they do not have to be absolutely straight and a slight curvature or other nonlinear configuration will do. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

33. At p16, line 20 the curved ends of the Fig. 3 embodiment are described and the point is made that the blunter end consists of two radius sections (122) separated by a straight section (124). The other end (120) includes a straight section (130) which is parallel to the straight section (124). At p17, line 20 the patent contemplates that another way of implementing this idea would be for these sections to define a slight curvature. Of course geometrically a curve cannot be perpendicular to anything but the document explains that the slightly curved sides will still be at least generally perpendicular to the part line. In this way these ends are still generally transverse surfaces for abutment between adjacent containers on the filling line. In other words the direction of travel along the filling line is parallel to the part line and as the bottles move along they may touch each other on these faces.

34. At page 18 the document explains that although the novel footprint in figure 3 is wholly distinct from a conventional square or rectangular container, the container is still generally rectangular for storage purposes and so each container can be stored side by side in rows and columns on a conventional trolley.

35. Next the patent addresses the Figs. 4 to 9 embodiment and at p19, line 24 it explains that the sides (152) and (154) may follow a slight curvature although in other embodiments they may follow straight lines.

36. The final embodiment (figs 10-15) is described from p21, line 11 onwards. The footprint has four major sides (p22, line 19) as well as four minor sides (176) which are at an angle of inclination to the part line. The corner regions of the footprint are significantly truncated. There is no dispute that in this final embodiment the length of the sides (172) is greater than the diameter of the aperture.

The claims

37. Claims 1 and 2 are set out below. Claim 1 is divided into features using convenient reference labels A to K:

Claim 1

A UK milk container of blow moulded plastic construction of the kind having a body with a central axis intended to be generally vertical during storage

B a pouring aperture concentric with said central axis

C an integral handle for use when carrying the container or when pouring milk from the pouring aperture, the integral handle defining a handle aperture taller than it is wide, with an aperture axis extending in a first direction through the body

D the body having a part line which bisects the body and extends in a second direction perpendicular to said first direction

E a footprint in plan view having a centre point through which the central axis extends, wherein MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

F the footprint is symmetrical about the part line and includes

G first and second pairs of opposing sides

H the first pair being shorter than the second pair and intersecting the part line at a first distance from the centre of the footprint, and

I the second pair being arranged orthogonal to said first pair and spaced from the part line by a second distance less than said first distance, further wherein

J the footprint defines four significantly truncated corner regions defining sides or faces of the footprint each at an angle of inclination to the part line, and wherein

K the length of said first pair of opposing sides of said footprint is less than the diameter of the pouring aperture.

Claim 2

2 A milk container according to claim 1 wherein the sides in said first opposing pair are straight and are bisected by the part line.

38. The important features for the purpose of this application are features J and K of claim 1. Alpla contends that feature K is not satisfied by their ECO 2 product. However before focussing on those features alone, it is necessary to consider the claim overall and in its context in the specification.

39. It is notable that of the three specific embodiments, the only embodiment which clearly falls within the claim is the one in figures 4 to 9. The embodiment in Figs. 10 to 15 is not within the claim since it does not satisfy feature K. It is not clear whether the embodiment in Figs. 1 to 3 satisfies feature J. The feature calls for a face or side which is at an angle to the part line. I doubt the language is apt to cover what is shown in Fig. 3 with an entirely rounded corner. Consistent with this, the references in the specification to truncating the corner regions do not occur in the context of any discussion of the Fig. 3 embodiment. But there is no need to decide the issue.

40. As Mr Speck rightly submitted, the fact that examples given in a patent specification are not or may not be within the ambit of a claim is relevant to claim construction but cannot be taken too far. The description should be read as a whole. All of it needs to be considered. Other elements claimed in the claims may be present in the examples and the invention can be understood in that regard by considering them.

Construction of claim 1

41. A patent should always be considered as it would be read by a person skilled in the art. No doubt that will be a person skilled in blow moulded plastics and construction MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

of milk containers and with their common general knowledge. The specification contains puzzles because at least one, possibly two embodiments do not fall within the claim but the words are simple to understand and there is no suggestion from either side that there are any terms of art involved. I have not been shown any point arising from the common general knowledge which has a bearing on the issue which Alpla’s declaration requires to be decided. Thus despite the lack of expert evidence on the common general knowledge relating to this area of technology, it is possible at least to start to construe claim 1.

42. The claim is to a blow moulded UK milk container with a pouring aperture and an integral handle. The claim defines the shape of the container by reference to various axes and directions. The body has a part line and the claim defines the orientation of the part line. When viewed in plan, as in all three embodiments, the part line bisects the footprint and the footprint is symmetrical about the part line. The claim defines opposing pairs of sides. The first pair are shorter than the second pair. The sides of the shorter first pair run essentially perpendicular to the part line. The sides of the longer second pair run essentially parallel to the part line. There are four truncated corner regions (feature J). Although the examples of cut off corners all depict corners with single faces the claim is not limited in that way. Each truncated corner could consist of more than one side or face. The last feature (K) requires the length of the first pair of sides to be less than the diameter of the aperture.

43. Overall, the footprint is a generally rectangular shape with the corners cut off.

44. The generally rectangular shape allows the bottles to pack together for storage. In use the longer (second) sides align with the guides on the filling line while the bottles abut each other side to side on the shorter (first) sides.

45. Although the overall purpose of all the shapes disclosed in the specification is to be such that the point of maximum radial distance from the centre is at or close to the part line, this is not a feature of the claim. Nevertheless this overall purpose does help to understand some of the claim features. Since the corners of a generally rectangular shape will tend to be the point of maximum radial distance from the centre and will not be on the part line, truncating the corners (feature J) will contribute to achieving the overall purpose. Also, although this is not spelled out, the point of feature K is probably to produce a profile which tends towards achieving the overall purpose as well since it tends to produce bigger truncated corners.

46. It may be noted that in order to apply feature K, the skilled person has to be able to work out what the length of the relevant side is, in other words they have to be able to work out where the side starts and ends. The parties both submitted that the side was the length bounded by the truncated corners.

47. The important point on claim construction on this application is whether the sides may have a slight curve or must be straight. It is clear from the specification that the sides can be straight but may be slightly curved. This is expressly described in the document. There is no suggestion that there is any evidence or any other material not presently before the court which might affect this question. No common general knowledge has been identified which might have a bearing on the issue. It can be decided here and now and Mr Speck invited me to do so. I think there can be no serious argument about the point. I find that the sides referred to in claim 1 need not MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

be straight, they may be slightly curved. The terms of claim 2 assist Alpla’s case on this point although they are not determinative.

48. This conclusion has important consequences when a skilled person comes to consider how to characterise a container for the purposes of the claim in order to decide whether it is within the claim (either for the purposes of validity or infringement):

i) First, since a side may be have a slight curve, a minute analysis of whether a part of the shape is geometrically straight or has a slight curve is unlikely to matter.

ii) Second, one cannot avoid the claim by having a footprint with no straight elements. A footprint with no straight elements may well fall within the claim. The fact that a region may include straight and slightly curved elements does not, of itself, mean that a region is not a “side”.

iii) Third, in a region which has both straight elements and slightly curved elements, one cannot simply ignore the curved regions and take the view that the straight element is the “side” in question.

iv) Fourth, this conclusion applies just as much to a side or face which is part of a truncated corner as it does to the opposing sides of the overall rectangular shape. In other words the fact a region has a slight curve does not prevent its being regarded as part of a truncated corner region.

The ECO 2 product

49. A drawing of the footprint of the ECO 2 (4 pint) is set out below.

50. This is a plan view from above. The pouring aperture can be seen and the handle is on the right. The part line runs horizontally. The first opposing sides are the sides which run perpendicular to the part line. Alpla submits the first sides are plainly larger than the diameter of the aperture. Therefore the product does not infringe. Alpla submits these first sides have a slight curve but that does not take them out of the claim.

51. Alpla produced a colour mark-up of the b/w original drawing. Two green horizontal lines have been added for the purposes of argument (they come out grey in b/w). The drawing is: MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

52. Alpla submits that the first sides extend between the lines shown in green running across horizontally in the picture. The relevant left hand first side is marked in red.

53. Nampak say Alpla’s characterisation of the sides in the container is not correct. To explain its case, Nampak produced a drawing which divides up the shape of the footprint into regions numbered 1 to 12 as shown below:

54. The footprint has been turned round. The part line now runs vertically. Different regions of the perimeter have been numbered 1 to 12. There is also a pair of vertical lines drawn for the purposes of the case.

55. Nampak says the relevant first opposing sides are the regions numbered 7 and 1. These regions are shorter in length than the diameter of the pouring aperture. Each truncated corner consists of two regions: 2+3, 5+6, 8+9 and 11+12. On this basis the ECO 2 satisfies features J and K of the claim. Whether the bottle actually infringes the claim depends on all the other claim features being satisfied but at least at this stage, the only features focussed upon are features J and K. Thus submits Nampak, since they are satisfied by the ECO 2, the application for a declaration of non- infringement should be rejected. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

56. So really the dispute is a simple one. Alpla contends that one relevant side consists of regions 6, 7 and 8 together and the other relevant side consists of regions 12, 1 and 2 together. If that is right then the bottle plainly does not satisfy the claim because the length of each of those sides is much greater than the aperture diameter. Nampak contends that the relevant sides are just regions 7 and 1. The other regions should be regarded as part of the truncated corners. If that is right then the bottle satisfies feature K because the side is shorter than the aperture diameter. Nampak submits that its approach to the application of the claim to the ECO 2 has a realistic prospect of success and so the matter should go to trial.

57. At one stage in this application Nampak’s position was that it needed to know the exact dimensions of the regions, their radii of curvature and the angles between them. One reason for this was to find out whether regions 7 and 1 were straight or slightly curved. It was clear from that that Nampak regarded its position on infringement as stronger if regions 7 and 1 were straight whereas it perceived that the information provided by Alpla did not make it clear whether those faces were straight. Not unreasonably Alpla perceived that this stance indicated that Nampak’s construction of the claim was that a side had to be straight. However Nampak’s counsel disavowed this claim construction during his submissions.

58. In fact it is obvious from a careful consideration of the drawings that regions 7 and 1 are straight lines. To the extent that the lines drawn allow for the possibility of any curve at all, it could only ever be a very tiny curve if it was to be consistent with the drawing. As it happens, in fact Alpla accept that in these regions 1 and 7 the line is a straight one and so the question does not arise in any case.

59. Alpla’s submission is that its approach is the correct way to characterise the opposing sides because the real issue is a matter of claim construction about whether sides may be slightly curved. Alpla submits that in fact, although Nampak denies it, Nampak’s case is that a side must consist of something which is in effect geometrically straight and curved parts do not count.

60. On the other hand, Nampak’s case is the following. It denies that its case is that the sides have to be straight. Nampak contends that its argument recognises that the patent makes it clear that sides do not have to be straight. However, it submits that if it is possible for Nampak to identify sides which satisfy the claim then the bottle infringes.

61. Nampak submits that the correct way of looking at it is to carry out the operation described in the specification relating to the Fig. 10 to 15 embodiment. A notional rectangle must be drawn around the profile. When one does that, it is possible to identify the truncated corners and to identify the point at which a relevant first side comes to an end. The latter is the point at which the perimeter of the profile begins to curve away from the geometrically straight line edge of the notional rectangle (see e.g. figure 15 of the patent). When one performs this exercise for the Alpla profile, the conclusion is that the relevant first sides are the regions numbered 1 or 7.

62. This means that on Nampak’s case the truncated corners each consist of pairs of faces but that still satisfies feature J because it does not require each corner only to have one side or face. All the sides and faces counted Nampak’s way are at an angle of inclination to the part line. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

63. Nampak submits that expert evidence will be required in order to comprehend the patent properly and in order to understand how properly to characterise the Alpla product. It will be directed, amongst other things, to the question of how the product behaves on a packing line as the bottles abut each other. Nampak submits strongly that to make a finding in Alpla’s favour is to fall into the same error which arose in Strix Ltd v Otter Controls Ltd and Monsanto & Co v Merck & Co. It is to construe the patent and determine infringement without having properly adopted the mantle of a skilled person and receiving relevant expert evidence about the common general knowledge.

64. A different point is as follows. Nampak submits that when one looks at the ECO 1 product which is alleged to infringe and which Alpla do not seek summary judgment, one can see it is very similar to the ECO 2 product. In truth both have the same straight faces 1 and 7. The only difference is that while in the ECO 2 the regions 6 and 8 and 12 and 2 have a slight curve, in the ECO 1 they are straight and there is a clearly identifiable corner edge between those regions and the faces 1 and 7. Nampak’s counsel asks, attractively, how can it be that if Alpla accept that there is an arguable case of infringement in relation to ECO 1 then this very small difference between ECO 1 and ECO 2 means that there is no arguable case in relation to ECO 2?

65. Attractive though it is, in my judgment that submission is apt to mislead. Alpla’s case is that neither product infringes. It is true that it is possible to regard the difference between ECO 1 and ECO 2 as small but that does not mean that I cannot decide that the ECO 2 product does not infringe. There is a difference between the cases which Alpla runs on these two products. For the ECO 1, Alpla has to say that the three straight faces 1, 2 and 12 are to be taken to be a single side even though they have clear corners. That may be right. However it is much easier from Alpla’s point of view to show that 2, 1 and 12 together are a single side for the purposes of the patent, since the patent specifically contemplates the idea of slightly curved sides.

The application on its merits

66. First, Nampak contends that evidence about how the bottle behaves on a packing line will be needed. However its position on this is entirely vague. In many cases the behaviour of a product as it is used is important. So here, conceivably, the patentee might have said that since the patent refers to abutment, the correct way to work out where the first side begins and ends is to watch the bottles moving on a filling line and look at how they touch each other. But there is no such case in Nampak’s evidence or submissions. Nampak complains that Alpla has not explained what happens on the filling line but that is no excuse. Clearly if one needs to know how the product behaves then Alpla’s application must fail. But Nampak has not explained why one needs to know nor has it explained what one needs to know. To defeat this application Nampak needed to do better than that.

67. Second, I am not convinced that the further dimensional information Nampak says it requires is necessary in this case. Mr Pinckney referred to a need for detailed measurements, which may need to be undertaken using the regime for experimental evidence. I do not believe that a skilled person reading this patent and considering the ECO 2 would believe that the sort of detail referred to was necessary in order to decide the point. This is a simple patent with a simple claim and the shape of the ECO 2 can readily be understood. Nothing has been put before the court which MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

explains how the outcome of any infringement analysis will depend on the results of the proposed detailed measurement experiments. All that would happen is that the results would put numbers on what one can see from the drawing.

68. In my judgment the attempt by Nampak to suggest that further evidence was needed is simply an attempt to put off a decision. If I thought there was any further evidence which needed to be called which had a bearing on this question I would refuse to grant summary judgment. But the court is today in as good a position to decide the issue of infringement of features J and K in Alpla’s favour as it is to decide it in Nampak’s favour.

69. Third, I reject Nampak’s argument that because it can assert that regions 1 and 7 are “sides” with all the relevant characteristics such that the claim is satisfied, that is enough for infringement or at least to resist summary judgment. This approach begs the question of how sides and corners are to be identified in the first place. At its lowest it is also plainly possible to assert Alpla’s non-infringement case in the same way. What these two rival assertions really show is that there is a prior question to be determined, namely how are corners and sides to be identified? Moreover Nampak’s approach is not enough in any event since if both approaches were proper ones and the skilled person does not know which to take then the result will be non- infringement as in Milliken v Walk Off Mats [1996] FSR 292.

70. Nampak relies on the common ground that a side is the length bounded by a truncated corner but focussing on this point does not help. All it achieves is to beg the question whether a given region (e.g. region 12) is part of the truncated corner or part of the first side.

71. Nampak also submitted that the fact that a region was curved, such as region 12, did not mean it could not be part of the truncated corner. I agree. Whether a region is slightly curved or straight is not the issue.

72. Nampak’s case is to compare the shape with a notional rectangle as was used in Figs. 10 to 15. It submits that this exercise shows that the truncated corners each consist of a pair of faces and that the relevant sides of the ECO 2 are the straight regions 1 and 7. However I am not satisfied that Nampak is correct as a matter of claim construction that it is legitimate to carry out this exercise using a geometrically precise rectangle which has right angled corners and straight sides. To take that approach is to ignore the teaching of the patent which contemplates that the sides need not be straight but could have a slight curve. The exercise of imposing a geometrically precise rectangle if the sides were entirely curved would produce the absurd result that the shape had no sides at all. That is plainly not what the patent means. No skilled person would interpret this patent in this way. Since the patent contemplates sides with a slight curve, if the approach of considering a notional rectangle was to be used at all, there is no reason not to use a generally rectangular shape with slightly curved sides and corners which are not quite at 90°. Using that sort of rectangle in this case produces a result in accordance with Alpla’s case.

73. I reject Nampak’s case that a side or a truncated corner can be identified based on its notional rectangle approach. MR. JUSTICE BIRSS Nampak v Alpla Approved Judgment

74. A skilled person would consider the question arising in this case by looking at the shape in plan view, just as in the figures in the patent. If pairs of opposing sides can be identified by observation then no problem arises. If a skilled person looks at the ECO 2 they see a broadly rectangular shape in which all four of the corners have been truncated by removing a generally triangular piece. There are two pairs of opposing sides. The sides in the pair parallel to the part line are straight. The sides of the other pair have a slight curve but are still generally perpendicular to the part line. The precise shape of each perpendicular side consists of a straight part in the middle and two gently curving parts extending to the truncated corners. This is the natural way of characterising the shape of the ECO 2.

75. The only arguments advanced why a skilled person would not characterise the product in this way are (i) Nampak’s argument based on the notional rectangle, which I have rejected as a matter of construction, and (ii) Nampak’s argument based on the behaviour of the bottle on a filling line which I have rejected because it is too vague.

76. Considering the shape of the Alpla ECO 2 product characterised in this natural way, it does not infringe because it does not satisfy feature K. The length of the first pair of opposing sides is greater than the diameter of the pouring aperture.

Conclusion

77. I find that the ECO 2 product as depicted in the application for a declaration does not infringe. I will allow the application and make the declaration.