Cinpres Gas Injection Ltd v Melea Ltd
| Jurisdiction | England & Wales |
| Judgment Date | 24 January 2008 |
| Neutral Citation | [2008] EWCA Civ 9 |
| Docket Number | Case No: A3/2006/2326 |
| Court | Court of Appeal (Civil Division) |
| Date | 24 January 2008 |
[2008] EWCA Civ 9
The RT Hon Sir Igor Judge, President of The Queen's Bench Division
The RT Hon Lord Justice Jacob and
The RT Hon Lord Justice Richards
Case No: A3/2006/2326
HC 03C 04152
IN THE SUPREME COURT OF JUDICATURE
COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION (PATENTS COURT)
THE HON MR JUSTICE MANN
Royal Courts of Justice
Strand, London, WC2A 2LL
Peter Prescott QC and Jessie Bowhill (instructed by Wragge & Co) for the Appellant/Claimant
Iain Purvis QC and Benet Brandreth (instructed by Nabarro) for the Respondent/Defendant
Hearing dates: 27/28 June 2007 and 20 November 2007
This is the judgment of the court on appeal from a decision of Mann J [2006] EWHC 2451 (Ch). It followed a trial of 15 days. The dispute is about the ownership of European Patent (UK) No. 0,424,435. Mann J had the unenviable task of deciding, as between two liars and perjurers, what the truth was (or at least what was most likely) about the making and ownership of the invention the subject of the Patent. His task was made all the harder because most of the supporting witnesses were themselves unreliable.
James Hendry was one of the liars. The other was Michael Ladney. Neither deserves the courtesy of a “Mister.”
Mann J observed at the outset that “this is a very strange case.” It has got a good deal stranger since then. Both sides have taken or tried to take fresh points to such an extent that the case hardly seems the same as the one with which Mann J had to deal.
Introductory
The Patent is registered in the name of a Gibralterian company, Melea Ltd. Hendry is named as the sole inventor. Melea is a company which is wholly or mainly a creature of Ladney. He gave perjured evidence to the effect that he knew little about it, whereas in fact he controlled it enough to cause it to buy a yacht for $1.9m. Melea is a vehicle of Ladney. It derives its title (or purported title) to the patent from Ladney via another Ladney company called Milad created for the purposes of defeating his creditors, particularly the US Government. Ladney originally claimed his title from Hendry, the alleged inventor.
Cinpres and Melea are competitors in the plastics moulding industry. The invention is called the “spillover” process. The Judge describes it at [4]. It avoids sink and weld marks in hollow plastic articles. The Judge found that Hendry “acquired, and indeed deployed, knowledge of the spillover process whilst he was at Cinpres” (para. 118) and that the process was used at Cinpres for making plastic plinths for a Bell and Howell projector in early 1985.
At the end of 1985 Hendry went to work for Ladney (personally at the time). In 1987 Ladney wanted to persuade General Motors that a plastic moulding could be used for a car door – the car in question being called a Baretta. Hendry used the spillover process and it worked. Ladney caused him to apply for a US patent. Thereafter international patent applications, claiming priority from Hendry's US application, were made. Ladney claimed to be the owner and Hendry the sole inventor. Later the benefit of the applications was assigned by Ladney first to Milad and then onwards to Melea. It is conceded that Melea can have no better title than Ladney. It is not conceded that Ladney could have no better title than Hendry
In January 1991 Cinpres started proceedings against Hendry and Ladney (this was before any onward assignment) under s.12 of the Patents Act 1977 claiming that the application should proceed in its name. It is a curiosity of s.12 that it confers jurisdiction over entitlement disputes not only for UK patent applications but for corresponding applications all over the world. S.12(1) says:
At any time before a patent is granted for an invention in pursuance of an application made under the law of any country other than the United Kingdom or under any treaty or international convention (whether or not that application has been made) -
(a) any person may refer to the comptroller the question whether he is entitled to be granted (alone or with any other persons) any such patent for that invention or has or would have any right in or under any such patent or an application for such a patent; or
(b) any of two or more co-proprietors of an application for such a patent for that invention may so refer the question whether any right in or under the application should be transferred or granted to any other person;
and the comptroller shall determine the question so far as he is able to and may make such order as he thinks fit to give effect to the determination.
Eventually that dispute came before the Comptroller's Hearing Officer, Dr Ferdinando. Hendry swore that he had made the invention only in 1988 when working for Ladney; that he had not known of it when working for Cinpres. He was believed, even though there was evidence, which was accepted, from a Mr Sayer an employee of Cinpres that it was he who had had the basic idea. In short the Hearing Officer held that two people, Mr Sayer and Hendry, had independently hit upon the same idea, Mr Sayer at Cinpres and Hendry, later, with Ladney. On appeal Laddie J thought Dr Ferdinando had failed to take into account certain undisputed evidence and reversed the decision. But his decision, on a yet further appeal, was itself reversed by this Court ( Ladney and Hendry's International Appn. [1998] RPC 319). The basic reason was that the Hearing Officer had had the advantage of seeing and hearing the witnesses, though the court clearly had some misgivings. Peter Gibson LJ said that the hearing officer's decision could not be said to be “plainly right”, although he himself was uncertain whether he would have reached the same decision.
So Cinpres lost. The patent was eventually granted by the European Patent Office on 4 th July 2001. It names Melea as patentee and Hendry as sole inventor.
Much later Hendry told Cinpres that he had perjured himself in the first Patent Office proceedings. The Judge describes how this came about at [50–55]. On 30 th June 2003 (within the two-year special limitation period provided by s.37(5)) Cinpres started entitlement proceedings in the Patent Office pursuant to s.37 of the Act. This is the provision which comes into play once a patent is granted. International jurisdiction is not conferred by it. It provides:
“(1) After a patent has been granted for an invention any person having or claiming a proprietary interest in or under the patent may refer to the comptroller the question –
(a) who is or are the true proprietor or proprietors of the patent;
(b) whether the patent should have been granted to the person or persons to whom it was granted;
(c) whether any right in or under the patent should be transferred or granted to any other person or persons;
and the comptroller shall determine the question and make such order as he thinks fit to give effect to the determination.
(2) Without prejudice to the generality of subsection (1) above, an order under that subsection may contain provision –
(a) directing that the person by whom the reference is made under that subsection shall be included (whether or not to the exclusion of any other person) among the persons registered as proprietors of the patent;
(b) directing the registration of a transaction, instrument or event by virtue of which that person has acquired any right in or under the patent;
(c) granting any licence or other right in or under the patent;
(d) directing the proprietor of the patent or any person having any right in or under the patent to do anything specified in the order as necessary to carry out the other provisions of the order.
……….
(8) If it appears to the comptroller on a reference under subsection (1) above that the question referred to him would more properly be determined by the court, he may decline to deal with it and, without prejudice to the court's jurisdiction to determine any such question and make a declaration, or any declaratory jurisdiction of the court in Scotland, the court shall have jurisdiction to do so.
(9) The court shall not in the exercise of any such declaratory jurisdiction determine a question whether a patent was granted to a person not entitled to be granted the patent if the proceedings in which the jurisdiction is invoked were commenced after the end of the period of two years beginning with the date of the grant of the patent, unless it is shown that any person registered as a proprietor of the patent knew at the time of the grant or, as the case may be, of the transfer of the patent to him that he was not entitled to the patent”
Very sensibly and properly (for it is not a tribunal experienced in complicated questions of general law or dealing with cases of acute conflicts of evidence or allegations of a quasi-criminal nature) the Office exercised its power under s.37(8) to decline to deal with the case; a decision which by that provision conferred the jurisdiction of the Patent Office on the court. So the current proceedings were commenced in November 2003.
Before Mann J the proceedings were fought on the assumption that if Hendry had made or acquired knowledge of the invention whilst at Cinpres, subject to the res judicata point, the invention belonged to Cinpres. Mann J held:
a) That the invention was made at Cinpres and that Hendry had perjured himself in the first proceedings:
b) That Ladney did not know that;
c) Accordingly the perjured evidence of Hendry was not to be attributed to Ladney.
d) As a matter of law, based on the...
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