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
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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
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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.
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MR. JUSTICE BIRSS
MR. JUSTICE BIRSSApproved Judgment / Nampak v Alpla
Mr Justice Birss:
MR. JUSTICE BIRSSApproved Judgment / Nampak v Alpla
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.
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’.
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 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 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.