AP Racing v Alcon Components
| Jurisdiction | England & Wales |
| Judge | Mr. Justice Henry Carr |
| Judgment Date | 04 March 2016 |
| Neutral Citation | [2016] EWHC 815 (Ch) |
| Docket Number | Claim No: CH/2015/0339 |
| Court | Chancery Division |
| Date | 04 March 2016 |
[2016] EWHC 815 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
ON APPEAL FROM
INTELLECTUAL PROPERTY ENTERPRISE COURT
Royal Courts of Justice
The Rolls Building,
7 Rolls Buildings,
Fetter Lane,
London, EC4A 1NL
Mr. Justice Henry Carr
Claim No: CH/2015/0339
Mr. Hugo Cuddigan QC (instructed by Kempner & Partners LLP, Solicitors) appeared on behalf of the Claimants/Respondents.
Mr. Douglas Campbell QC (instructed by Withers & Rogers LLP, Patent Attorneys) appeared on behalf of the Defendants/Appellants.
This is an appeal against the Order of His Honour Judge Hacon, sitting as an Enterprise Judge of the Intellectual Property Enterprise Court ("the IPEC") dated the 17 th June 2015. That Order gave effect to a judgment handed down on the 15 th May 2015. Judge Hacon declined to strike out a claim for patent infringement on the basis of Henderson v. Henderson abuse of process in respect of certain products which he referred to as "the 7 Calipers".
The background facts are as follows. There had been a trial of validity and infringement of the patent in suit in the Patents County Court; [2013] EWPCC 3. There was an appeal from the resulting Order; [2014] EWCA Civ 40; [2014] R.P.C. 27; and the patent was found to be valid and infringed by certain calipers of the defendant ("Alcon").
Before the case was transferred to the Patents County Court, Kempner & Partners, acting on behalf of the patentee ("AP Racing"), wrote a letter dated 26 th May 2011 to Wragge & Co., acting on behalf of Alcon, objecting to the transfer. In that letter they said:
"Our view is that the dispute is not suitable for the Patents County Court, on the basis of the complexity of the issues raised (particularly given that you have said you will raise added subject matter issues) and the likely level of damages. We do not, however, have all the necessary information to make a final decision on this issue. Please would you therefore provide:
Information as to other products manufactured by your client which contain the same features as found in the products. In this regard, our client is aware of your client's products PC 1106, 1107 and 1111–1113, which appear to be very similar to the Products, and our client strongly suspects that those products are also infringing;"
That letter raised the question in the context of the likely level of damages in respect of of other products manufactured by Alcon containing the same features as found in the products which were alleged to infringe and, in my judgment, made it clear that AP Racing did not know of all such products and was asking for information (which Alcon undoubtedly did know), as to any other products which might infringe.
The response to that letter, dated the 1 st June 2011, was as follows:
"In terms of determining the value of the claim, the nature and extent of the information your client has requested extends far beyond that which a Court would need in order to determine the issue. Indeed, it is, in our view, less of a genuine attempt to determine the value of the claim and more of a fishing expedition in confidential financial information relating to a competitor's business".
Accordingly, no further information was provided about other products manufactured at that date by Alcon which might infringe the patent. However, the evidence before Judge Hacon established that there were further calipers manufactured and distributed by Alcon at that date which at least arguably infringed the patent, namely, the 7 Calipers.
The evidence establishes that, at the time of that correspondence, AP Racing was unaware of the 7 Calipers, and was unaware of them at the date of the first Case Management Conference ("CMC") which took place in 2012. The Judge found that AP Racing had had opportunities to observe these calipers at trade shows, but it had not done so. When it subsequently discovered the 7 Calipers, in January 2014, AP Racing initially wished to have them included in the damages inquiry and proposed that the judge at the inquiry should decide associated issues of infringement. Alcon refused to accede to that proposal. In particular, by a letter dated the 3 rd October 2014, in response to a suggestion that the 7 Calipers could not be included in the damages inquiry because, according to Alcon, it would be an abuse of process to do so, Kempner & Partners set out the correspondence from 2011, to which I have just referred, and said:
"It is clear, therefore, that our client could not possibly have included any other calipers in the liability trial in the PCC. In these circumstance, there would appear to be two options open to the parties. Either the additional calipers fall for consideration in the inquiry as to damages (including, of course, the consideration of whether they fall within the claims of the patent) or our client is permitted to issue another claim in respect of them. Please let us know if you disagree, and if so explain why".
Alcon did not agree with either of these proposals.
In 2015 a further action was started by AP Racing against Alcon in respect of 3 calipers which had not been manufactured at the time of the first proceedings ("the 2015 Proceedings"). It is common ground that the claim in respect of those 3 calipers will have to go to trial.
The 7 Calipers were also included in the 2015 Proceedings. According to Alcon, that constitutes an abuse of the process of the court. Therefore, the application before Judge Hacon was to strike out a part only of the 2015 Proceedings. Furthermore, it was not alleged by Alcon that the claim in respect of the 7 Calipers could be struck out on the basis that infringement was unarguable. It was common ground, and in any event I find, that I must proceed on the basis that there is an arguable case of infringement (just as there is an arguable case of non-infringement) in respect of the 7 Calipers.
In his judgment at [49] Judge Hacon concluded as follows:
"Looking at this from the point of view of whether a determination of infringement in relation to the 7 Calipers would unjustly oppress or harass Alcon, since AP Racing would — as a matter of usual patent practice — have been entitled to such a determination in the inquiry on the present facts, I do not see how there could be unjust oppression or harassment".
In other words, Judge Hacon made a finding that, in accordance with the usual patent practice, AP Racing would have been entitled to introduce the 7 Calipers into the damages inquiry, infringement having been established in respect of certain other calipers manufactured by Alcon. In those circumstances he could not see why it would be unjust or oppressive to Alcon to introduce them into the 2015 Proceedings, which would have to be tried in any event.
AP Racing contends that his decision was correct and support the conclusion at [49]. However, by a Respondent's Notice, AP Racing contends that other parts of Judge Hacon's judgment suggest that the usual patent practice, whereby the patentee pleads certain alleged infringements and if the patent is found valid and infringed, it is thereafter possible to introduce other examples of infringement at the damages inquiry, should not be followed in the IPEC; and that it is more likely in the IPEC than in the High Court that a patentee who does not list all possible infringements at the first CMC may be debarred from claiming in respect of them in a subsequent damages inquiry. AP Racing contends that although Judge Hacon's decision is right, his reasoning in those respects was wrong, and that this provides additional reasons for upholding his ultimate conclusion.
I turn now to those parts of the judgment where the Judge has set out the law in relation to abuse of process. At [8] the Judge cites the well-known passage from the speech of Lord Bingham of Cornhill in Johnson v Gore Wood & Co [2002] 2 AC 1 at page 31. Lord Bingham said:
"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".
That, in my judgment, is the test that Judge Hacon applied, correctly, in this case. At [9] he quoted from Lord Millett in the same case at pages 59 to 60. Lord Millett said:
"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...
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