AP Racing Ltd v Alcon Components Ltd
| Jurisdiction | England & Wales |
| Judge | His Honour Judge Hacon,Judge Hacon |
| Judgment Date | 15 May 2015 |
| Neutral Citation | [2015] EWHC 1371 (IPEC) |
| Docket Number | Case No: IP-2015-0000395 |
| Court | Intellectual Property Enterprise Court |
| Date | 15 May 2015 |
[2015] EWHC 1371 (IPEC)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
His Honour Judge Hacon
Case No: IP-2015-0000395
Hugo Cuddigan QC (instructed by Kempner & Partners LLP) for the Claimant
Douglas Campbell (instructed by Withers & Rogers) for the Defendant
Hearing dates: 5 May 2015
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.
Introduction
This application by the Defendant ("Alcon") raises the following issue: where a claimant has succeeded in establishing infringement of his patent by reference to particular articles considered by the court, to what extent can he subsequently raise a further allegation of infringement of the same patent in relation to other articles? The further allegation could arise either in an inquiry or account following trial or in a second action, as here.
Procedural background
On 24 May 2011 the Claimant ("AP Racing") issued a claim in the Patents Court for infringement of its UK Patent No. 2 451 690 ("the Patent") by the defendant ("Alcon"). I will refer to this as "the First Action". The patent concerned disc brake calipers for motor vehicles, particularly racing cars. The proceedings were transferred to the Patents County Court ("the PCC"). A case management conference took place in the PCC on 29 June 2012.
The trial was heard on 19 and 20 December 2012 and on 5 February 2013 His Honour Judge Birss QC gave judgment, finding the Patent invalid on the ground of added matter but also finding that if the patent had been valid it would have been infringed by four out of five shapes of Alcon's calipers relied on in AP Racing's Particulars of Infringement. I will refer to the five pleaded products as "the First Action Products".
AP Racing appealed the finding of invalidity. On 28 January 2014 the Court of Appeal allowed the appeal, ruling that the patent was valid. Among other things the Court ordered that at AP Racing's election there would be an account of profit or an inquiry as to damages. Before its election between an inquiry and account, AP Racing sought Island Records disclosure. In a letter dated 31 January 2014 AP Racing sought such disclosure not just in relation to the First Action Products but also other calipers sold by Alcon. Alcon did not accept this broadening of AP Racing's claim to relief and limited its disclosure to the First Action Products. AP Racing elected for an inquiry and served its Points of Claim on 7 April 2014. The Points of Claim related only to the First Action Products.
On 3 October 2014 AP Racing wrote to Alcon raising again a claim for relief in relation to the further calipers referred to in its letter of 31 January 2014. There followed correspondence in which Alcon resisted this expanded claim. There was a CMC in the inquiry on 3 December 2014. AP Racing blew hot and cold: having initially sought to have directions in the inquiry which included its claim in relation to the further calipers, it then withdrew from this position so that directions were given solely in relation to the First Action Products. Yet in a letter dated 5 December 2014 AP Racing decided to renew its claim for Island Records disclosure in respect of the further calipers. In a letter dated 22 January 2015 Alcon declined to give that disclosure.
The next stage was that AP Racing abandoned its claim for relief in the inquiry with regard to calipers other than First Action Products. Instead a fresh action was started against Alcon with Particulars of Claim served on 9 March 2015 ("the Second Action"). In this Second Action AP Racing alleges that the Patent has been infringed by Alcon's manufacture and sale of calipers different from the First Action Products, identified by 10 product codes.
By an application dated 20 April 2015 Alcon seeks to strike out the Second Action pursuant to CPR 3.4(2)(b) in so far as it relates to 7 out of the 10 types of caliper. For want of a better name I will refer to the calipers in issue as "the 7 Calipers". Alcon argues that because the 7 Calipers were publicly available before the start of the First Action, AP Racing could and should have made them part of its claim in the First Action and that therefore the Second Action is an abuse of process, following the rule in Henderson v Henderson (1843) 3 Hare 100.
The law
The law on Henderson v Henderson and abuse of process
The usual starting point for the modern law on this aspect of abuse of process of the court is Johnson v Gore Wood & Co [2002] 2 AC 1, particularly the well known passage from the speech of Lord Bingham of Cornhill at page 31:
"But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party's conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice."
In the same case Lord Millett said this at pages 59–60:
"It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen's right of access to the court conferred by the common law and guaranteed by article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms. While, therefore, the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the court from abuse and the defendant from oppression. In Brisbane City Council v Attorney General for Queensland [1979] AC 411, 425 Lord Wilberforce, giving the advice of the Judicial Committee of the Privy Council, explained that the true basis of the rule in Henderson v Henderson 3 Hare 100 is abuse of process and observed that it 'ought only to be applied when the facts are such as to amount to an abuse: otherwise there is a danger of a party being shut out from bringing forward a genuine subject of litigation'. There is, therefore, only one question to be considered in the present case: whether it was oppressive or otherwise an abuse of the process of the court for Mr Johnson to bring his own proceedings against the firm when he could have brought them as part of or at the same time as the company's action. This question must be determined as at the time when Mr Johnson brought the present proceedings and in the light of everything that had then happened. There is, of course, no doubt that Mr Johnson could have brought his action as part of or at the same time as the company's action. But it does not at all follow that he should have done so or that his failure to do so renders the present action oppressive to the firm or an abuse of the process of the court. As May LJ observed in Manson v Vooght [1999] BPIR 376, 387, it may...
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