Cavity Trays Ltd v Rmc Panel Products Ltd
| Jurisdiction | England & Wales |
| Judge | LORD JUSTICE ALDOUS,SIR JOHN BALCOMBE,LORD JUSTICE NEILL,Order |
| Judgment Date | 06 February 1996 |
| Judgment citation (vLex) | [1996] EWCA Civ J0206-5 |
| Date | 06 February 1996 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | CCRTI 95/0089/G |
[1996] EWCA Civ J0206-5
IN THE SUPREME COURT OF JUDICATURE
IN THE COURT OF APPEAL (CIVIL DIVISION)
On appeal from order of His Honour Judge Peter Ford
Before: Lord Justice Neill Lord Justice Aldous Sir John Balcombe
CCRTI 95/0089/G
MISS MARY VITORIA (Instructed by Reynolds Porter Chamberlain of London) appeared on behalf of the Appellant
MR MARK VAN HEGAN (Instructed by Eaton Smith & Downey of Huddersfield) appeared on behalf of the Respondent
( )
With the leave of this court, the plaintiff appeals against the order of HH Judge Peter Ford of 9 May 1994 which struck out the Writ and Statement of Claim and dismissed the action pursuant to O13 r5 of the County Court Rules as he concluded that the pleading did not disclose a cause of action and amounted to an abuse of the process of the court.
This action arose out of events that happened in November 1991. On l3 November 1991, the defendant, RMC Panel Products Ltd, became aware that the plaintiff was intending to launch at an exhibition on 24 November 1991 a new type of cavity wall closer to be called "Type H Cavicloser". The defendant contacted its patent agent, G F Redfern & Co, who advised that the Cavicloser infringed a patent in respect of which the defendant was the exclusive licensee and therefore had rights under Section 67 of the Patents Act 1977. Pursuant to that advice the defendant's patent agents, upon instruction, wrote to the plaintiff a letter before action dated l5 November 1994 in these terms.
"Dear Sirs
UK Patent No 2 197 671
We act for RMC panel Products Ltd, who are the Licensees of the proprietors of the above-identified UK Patent and of several other UK Patents relating to insulated and uninsulated cavity closers and accessories therefor.
….
It has come to our attention that you are promoting and marketing a cavity closer product under the name 'Type H Cavicloser'. A description and drawings of this item were published in the November 1991 edition of HouseBuilder, and from this description and drawings it appears to us that the product infringes at least Claims l, 5, 6, 9, 10 and 11 of UK Patent 2 197 671.
The 'Type H Cavicloser' is also considered to infringe claims of UK Patent 2 071 730, of which my client is also the Licensee.
Our client regards this blatant infringement of the Patent as an insupportable intrusion into its rights, and urgently demands the following undertakings:
1That you will forthwith cease all activity in the manufacture, promotion, marketing, advertising and sale of the 'Type H Cavicloser'.
2That you will not in future recommence manufacture or marketing of the 'Type H Cavicloser' without prior permission from our client.
3That you will provide details of the amounts of 'Type H Cavicloser' already sold.
4That you will pay our client's legal costs in connection with this matter.
If we have not received the requested undertakings by close of business on Monday 18 November our solicitors, who have already been instructed, will, on Tuesday 19 November, issue proceedings in the Chancery Division of the High Court for an Interlocutory Injunction restraining you from any manufacture, marketing, promotion or sale of the 'Type H Cavicloser'."
The plaintiff contacted its solicitors who replied by fax on 19 November 1991 to the letter I have quoted stating that they had been taking instructions and would write again within the next few days. They said that the time limit given was absurd and that any action taken would be resisted. To that the solicitors acting for the defendant replied by fax on the same day explaining that the complaint had been made as soon as the defendant had become aware of the infringement and that the time limit reflected the prospective launch of the product on 24 November. The letter went on to say that institution of proceedings would be deferred for l4 days to enable the plaintiff to carry out appropriate enquiries, provided that an undertaking was given not to launch the product in the meantime. The plaintiff's solicitors responded on the same day. They said:
"Once again we are bound to say that the time limits you give are absurdly short and as we have said although the matter is under investigation it is too soon for a full response to be given. Nevertheless in the light of what follows you will understand that it would be quite unreasonable for our clients to desist from their plans for their product and any application you may make will be resisted. Perhaps you would kindly note that we must have notice of any application with copies of any documents upon which you propose to rely."
The defendant decided to commence proceedings for infringement of patent and to seek an interlocutory injunction to restrain the launch of the Cavicloser. It decided to proceed in the Patents County Court and obtained an appointment for a hearing at ll.30 am on 22 November 1991. On 21 November the defendant's solicitors informed the plaintiff's solicitors of the appointment. They said:
"Please note that an ex-parte application for an interlocutory injunction restraining your clients from launching their 'H-Type Cavitycloser' will be heard at Wood Green County Court at ll.30 am tomorrow. We shall endeavour to fax you a copy of the affidavit, upon which our clients will rely, as soon as it has been sworn."
After receiving the letter of l5 November, the plaintiff did not sit back and wait. It instructed specialist counsel who gave preliminary advice. Upon receipt of the fax of the 2l November he was instructed to attend before the judge on 22 November to resist the grant of an interlocutory injunction. He did so, but shortly before the hearing was due to take place, he was informed by the judge's clerk that the court had just received a telephone call informing it that the application was not going to proceed at that time. The reason for that is contained in the affidavit of Mr Webb, the solicitor having conduct of the case on behalf of the defendant. Early on the morning of 22 November, it became clear to him that the defendant had transferred, by agreement dated 23 January 1991, all its assets and liabilities to an associated company called RMC Building Products Ltd. Thus it became apparent that the defendant might not have the necessary exclusive license enabling the action to be started. Further, at about 10 am, he learnt that the defendant was not in a position to provide a satisfactory cross-undertaking in damages. He endeavoured to obtain instruction from RMC Building Products Ltd so that it could be joined as a plaintiff, but was unable to do so and at about ll.l5 am he informed counsel and the court that the application could not proceed.
After counsel for the plaintiff had been informed by the judge's clerk that the application was not going to be made, he suggested that he should outline his client's case to the judge in the hope that any subsequent application made without notice would be refused. The judge acceded to that suggestion and listened to his submissions. At the end there was a discussion as to costs and there is a dispute between the parties as to whether or not counsel asked for costs and was refused or whether the matter was left open. In any case no costs were ordered to be paid. Further to date, no proceedings have been commenced by the defendant for infringement, but proceedings were started in January 1994 by RMC Building Products Limited.
In the Statement of Claim, the plaintiff refers to the proposed launch and subsequent launch of the Cavicloser. Thereafter it is alleged that threats of patent proceedings were made. The relevant part of the pleading is as follows.
"6.The Defendant, in a letter dated l5 November 1991 written by the Defendant's Patent Agents to the Plaintiff, threatened the Plaintiff with proceedings for infringement of patent. A copy of the said letter may be inspected by arrangement at the offices of the Plaintiff's Solicitors.
PARTICULARS OF THREATS
By the said letter the Defendant claimed to be the licensee of United Kingdom Patents No 2 197 671 and No 2 071 730 and alleged that the Plaintiff's "… product infringes at least claims l, 5, 6, 9, 10 and ll of UK Patent 2 197 671" and "… is also considered to infringe claims of UK Patent 2 071 730 …". Further, the Defendant threatened that unless the Plaintiff ceased forthwith its acts of manufacture, promotion, marketing, advertisement and sale of Cavicloser, and gave undertakings that it would do so, the Defendant would launch proceedings on 19 November 1991 for an interlocutory injunction restraining the Plaintiff from doing any of the said acts."
The pleading goes on to refer to the letter of 2l November 1991 which notified the plaintiff's solicitors of the defendant's intention to apply for an interlocutory injunction on 22 November and alleges that notice of the application was given with the expectation that the plaintiff would, or was likely to, take the necessary steps to oppose the application or/and that it was reasonably foreseeable that the plaintiff would do so. It then alleges:
"13. The Plaintiff, by reason of the Defendant's said representation that it would seek the injunction referred to hereinabove, has been put to the cost of preparations to oppose such application, in particular, of seeking advice from Patent Agents, Solicitors, and Counsel, and representation at court, being in total, £3603–47. In the circumstances the Plaintiff will seek to recover such costs from the Defendant.
14. Further or alternatively, the Plaintiff is a person aggrieved by the Defendant's threats to bring proceedings...
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