Active Photonics AG v GB Solo Ltd and Another
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Birss,Judge Birss |
| Judgment Date | 27 February 2013 |
| Neutral Citation | [2013] EWPCC 9 |
| Court | Patents County Court |
| Docket Number | Case No: 1CL70020 |
| Date | 27 February 2013 |
[2013] EWPCC 9
IN THE PATENTS COUNTY COURT
Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
His Honour Judge Birss QC
Case No: 1CL70020
Shulmans for the Claimant
Lupton Fawcett for the First Defendant
James Brooks, director of the Second Defendant
On paper
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.
His Honour Judge Birss QC
This is a patent action in relation to the claimant's patent EP 1107041 entitled "Mask to display an image taken with a camera". It began in February 2011 when the claimant issued a claim form against the first defendant alleging infringement. The first defendant denied infringement and counterclaimed for revocation.
The action has had a chequered history. There was a dispute about the period for service of the defence which was resolved on paper with an order on 1 st September 2011. The order directed the parties to liaise about a date for a case management conference (CMC) before the end of 2011. No CMC was arranged. It is not clear why not. It may have had something to do with proceedings in the EPO. On 15 th February 2012 the EPO dismissed the first defendant's opposition to the patent.
In any event in April 2012 the claimant applied to amend the Claim Form and Particulars of Claim to join the second defendant. The claimant believed that the second defendant was closely related to the first defendant but was now selling at least some of the products alleged to infringe. In the Amended Particulars of Claim it was alleged that (at least as at April 2012) some shareholders were common between the two companies. Moreover two directors of the second defendant (James Brooks and Victoria McLaren) are or were also shareholders of the first defendant. The claimant contends that the first defendant's business was transferred to the second defendant in summer 2010. The Amended Particulars of Claim also contends that the second defendant is jointly liable for the infringements alleged to have been committed by the first defendant.
On 1 st June 2012 the case came before Mr Recorder Campbell. This was for a CMC and to determine the application to join the second defendant. The second defendant was joined into the proceedings. Its defence was due on 31 st August 2012. The issues were identified and full directions were given to bring the matter to trial. The parties were to make an appointment with the Listing Office before 31 st July 2012 for trial date to be fixed and the case was to come on to trial on the first available date after 28 th September 2012. However no appointment was made and no trial date was arranged. In September 2012 the solicitors acting for both defendants ceased to act for them and came off the record but then later in September sought to come back onto the record again and then off again. At some stage, it does not matter when, the defendants' solicitors again ceased to act for the second defendant.
No defence from the second defendant had been filed and on 2 nd October 2012 James Brooks, a director of the second defendant wrote to the court. The letter stated that the second defendant did not believe it infringed and did not believe the patent was valid. The letter raised a host of issues and included numerous exhibits. It acknowledged that the second defendant was out of time in relation to various steps ordered at the CMC on 1 st June and apologised. The letter asked to court to review the case and consider whether the case could be determined on the papers. In an order made on paper on 4 th October I directed that another CMC should take place before 30 th November 2012.
The matter came before me on 26 th November 2012. The claimant and the first defendant were represented by counsel and solicitors. Mr Brooks appeared for the second defendant. It was clear at that hearing that the second defendant was responsible for a significant part of the difficulty although it was not solely responsible for everything. I made a series of case management directions to get this action back on track. The directions included a fixing the date for trial on 23/24 th July 2013 with a timetable for evidence including expert evidence on particular issues.
The 26 th November 2012 order included two "unless" orders. One was an unless order requiring the first defendant to clarify certain aspects of its case by 14 th January 2013, failing which its defence and counterclaim would be struck out. The first defendant subsequently complied with the terms of that unless order.
The second unless order required the second defendant to serves its Defence (together with any counterclaim) by 4.00pm on 10 th December 2012, in default of which the second defendant would be debarred from defending the claim and judgment would be entered for the claimant. When I made the order I took the trouble to explain it to Mr Brooks in person and make sure he understood its significance.
No defence was served by the second defendant within the period specified by the order but on 13 th December 2012 the second defendant sent a copy of a Defence to the claimant's solicitors and the court. The claimant's position is that the Defence was out of time and so the second defendant was in default and the unless order should take effect. There was correspondence between the parties in January to see if the matter could be compromised but no agreement was reached. No application for relief against sanction was made by the second defendant and on 31 st January 2013 the claimant applied on paper for judgment to be entered in the claimant's favour against the second defendant on the ground that the second defendant had failed to comply with the unless order. Amongst other things the judgment sought includes damages in the sum of £2,000 and costs (to be summarily assessed in the sum of £19,950). The application also contends that since the claim is expressed on a joint and several basis as between the defendants, if the second defendant pays the costs and damages as may be ordered by the court, the claimant's claim against the first defendant will be satisfied and as a result the claimant requests that the claim against the first defendant be stayed.
The application was served on 7 th February and the second defendant set out its case in a letter from Mr Brooks dated 13 th February. On the issue of the lateness of the defence, Mr Brooks states:
"I apologise to the court for the late delivery of Solo TI's defence. This was an error.
[While] I understand that the court's order in November 2012 was drafted so that the claimant could get judgment in default if Solo TI was late in serving its defence if there is anything I can do to persuade the court to accept the late defence please let me know."
The letter also addresses costs and damages and states that Mr Brooks is very concerned that the claimant thinks it can get an order that the second defendant pays costs incurred by the first defendant and damages for a product sold by the first defendant. He argues that the costs sought were not caused by the second defendant and most were incurred before the second defendant joined the proceedings. He argues that the damages are for sales by the first defendant. In relation to the injunction and delivery up, Mr Brooks refers to an offer he says was already made not to deal in the allegedly infringing products. He also says that he does not believe any article his company holds infringes the patent.
The first defendant has submitted that there...
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