Corma Inc. and Others v Hegler Plastik GmbH and Another
| Jurisdiction | England & Wales |
| Judge | The Hon. Mr Justice Birss,Mr Justice Birss |
| Judgment Date | 18 September 2013 |
| Neutral Citation | [2013] EWHC 2820 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC11 C02959 |
| Date | 18 September 2013 |
[2013] EWHC 2820 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Royal Courts of Justice
Strand, London, WC2A 2LL
Mr Justice Birss
Case No: HC11 C02959
Andrew Lykiardopoulos (instructed by Powell Gilbert LLP) for the Claimants
Michael Silverleaf QC (instructed by Bristows LLP) for the Defendants
Hearing dates: Monday 29th July 2013
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.
This is a summary judgment application brought by the defendants in the course of a patent dispute. The patent is EP (UK) 1 363 766 entitled "Method and device for producing a double-walled thermoplastic pipe with integral pipe bell". The patent concerns a method of making plastic corrugated pipes. The defendants request that the claim for infringement be summarily determined. There were other ancillary applications before me but this judgment relates to the application for summary judgment. The claimants can be referred to collectively as Corma and the defendants as Hegler.
The infringement claim concerns a corrugator used for making corrugated pipes known as the "Hegler Device" and in particular the process that is used to make three sizes of pipes: the 375mm, 450mm and 600mm pipe sizes. Claim 1 of the patent is the only claim in issue and it covers a method for making such pipes. There is also a counterclaim by Hegler for revocation.
The action was commenced in August 2011 and the trial was due to take place in May 2013. Expert and factual evidence had been served and trial skeleton arguments exchanged. Just days before trial Hegler sought to introduce a new experiment which had been undertaken by their expert on the 375mm process. Helger said that this experiment proved non-infringement.
On the day before the trial was due to begin, Warren J allowed the evidence to be admitted and ordered that the trial be vacated to give Corma the opportunity to undertake infringement measurements and experiments in reply. The Judge ordered Hegler to permit further inspections and measurements to be undertaken on the three processes in issue. The trial has been relisted for January 2014 and Warren J left it to the parties to agree a timetable for the inspections and other matters to be undertaken.
Late in May 2013 the EPO Board of Appeal considered the validity of the patent over the same prior art as is in issue in these proceedings. The EPO decided that the claim as granted was invalid but that an amended claim was valid. The patent was therefore allowed by the EPO in an amended form. Helger's position is that there is no real prospect of a finding of infringement on the amended claim and Hegler has now brought this application for summary judgment.
Mr Andrew Lykiardopolous appears for the claimants instructed by Powell Gilbert LLP and Mr Michael Silverleaf QC appears for the defendants instructed by Bristows LLP.
Having heard the argument I informed the parties that I would refuse the application for summary judgment. These are my reasons for that decision. There is no need for the parties to attend the handing down of this judgment.
Principles
There is no dispute about the principles applicable on an application for summary judgment of this kind. Mr Lykiardopolous referred to the summary by Kitchin J in Allen v Bloomsbury Publishing PLC [2010] EWHC 2560 (Ch) in paragraphs [11] to [13]. Among the judgments referred to in that passage are Three Rivers D.C. v Bank of England (No. 3) [2001] 2 All ER 513,Swain v Hillman [2001] All ER 91,ED & F Man Liquid Products v Patel [2003] EWHC (Civ) 472,Doncaster Pharmaceutical v The Bolton Pharmaceutical 100 Limited [2006] EWHC (Civ) 661, and Celador Productions v Melville [2004] EWHC 2362 (Ch). I will not set out Kitchin J's summary of the law which was not challenged by Mr Silverleaf.
Mr Lykiardopolous also referred to Monsanto v Merck [2000] RPC 77 in which the Court of Appeal warned against construing a patent at a summary stage since that task can only be accomplished after a court has heard the evidence necessary to adopt the mantle of the person skilled in the art, and endorsed the approach of the Court of Appeal in Strix v Otter Controls [1991] FSR 354 in which Dillon LJ held that it had been wholly inappropriate for an infringement case to be struck out.
Mr Silverleaf reminded me of the judgment of the Court of Appeal in National Westminster Bank v Daniel [1993] 1 WLR 1453. In that case Glidewell LJ considered the proper test which the court should adopt on an application for summary judgment. Although it was a case under the former Rules of the Supreme Court Order 14, Mr Lykiardopolous did not suggest that the principles enunciated there were not applicable before me under the CPR. Glidewell LJ said the following at page 1457 at E:
"I think it right to ask, using the words of Ackner LJ in the Bank de Paris case at page 23 'Is there a fair or reasonable probability of the defendants having a real or bona fide defence?' The test posed by Lloyd LJ in the Standard Chartered Bank case, Court of Appeal (Civil Division) transcript number 699 of 1990: "Is what the defendant says credible?" amounts to much the same thing as I see it. If it is not credible there is no fair or reasonable probability of the defendant having a defence."
Mr Lykiardopoulos did not suggest that this did not apply to the case before me and I accept Mr Silverleaf's submission that it does.
The claim
Claim 1 of the patent is as follows:
"Method for manufacturing a double walled, thermoplastic tube with a connecting tube whereby:
a) a first tube is extruded into a mould tunnel comprising at least one row of moulds guided on a path,
b) the first tube is given a corrugated shape in at least one first section and expanded into a connecting sleeve in at least one second section,
c) a second tube is extruded into the first tube and pressed against the corrugation troughs of the first tube,
d) while the first tube is being given the corrugated shape and the second tube extruded into the first, a space (A) between the two tubes is subjected to a pressure p1 that is above atmospheric pressure,
e) the space (A) between the two tubes is subjected, at a specified time before or after expansion of the first tube into a connecting sleeve, to an essentially constant pressure p2=p1, or to a variable, but not continuously declining pressure p2, p2 lying above atmospheric pressure,
f) during extrusion of the second tube into the first tube, which has already been expanded into a connecting sleeve, the second tube is internally subjected to a pressure p3 above atmospheric pressure and pressed against the first tube, and
g) pressure p1 is subsequently again applied to space (A) between the two tubes."
Claim 1 is shown above in the form as amended in the EPO. The words struck through in feature 1(e) were present in the claim as granted and have been deleted as a result of the decision of the EPO Board of Appeal. It will be noted that feature 1(e) is now limited to a requirement that the pressure p2 in the space (A) at the relevant time is an essentially constant pressure which is less than or equal to the previous pressure in this region (p1) and is a pressure above atmospheric pressure. Before amendment, although p2 still had to be above atmospheric pressure, the claim also covered the case in which p2 was a variable, but not continuously declining, pressure. That possibility has been removed from the claim by the amendment.
Submissions
The defendants' case is put on two bases. The first is that on the facts which are undisputed it is submitted that the process operated by the Hegler Device on all three of the pipes does not infringe the claim in its form now amended. I can dismiss this basis of the application for summary judgment without any detailed consideration of it because the claimants' infringement case is supported by the evidence of Professor Tim Osswald. Professor Osswald is a Professor in the Department of Mechanical Engineering at the University of Wisconsin in the Polymer Engineering Center. He has provided five expert reports in these proceedings. His fifth expert report articulates his opinion that the process operated by the Hegler Device satisfies the requirements of claim 1 of the patent in its form as amended by the EPO and in particular of feature 1(e).
Professor Osswald's opinion in his fifth expert report is that the Hegler Device in operation satisfies the pressure requirements of integer 1(e). In particular he states his view that in the relevant space at the relevant time there is an essentially constant pressure which is less than p1 and is above atmospheric pressure. I should say that the defendants do not accept this opinion is correct but it is perfectly apparent that on this application there is no basis for saying that the claimants do not have a realistic prospect of success based on Professor Osswald's opinion. That is sufficient to dispose of the first basis on which Mr Silverleaf puts his case.
The second, and I should say the real basis on which the defendants apply for summary judgment is the following. They say as a result of the way in which the Professor's opinion has been expressed in his various reports and, in particular, as a result of the existence of a fundamental change in his position (as the defendants see it), the court is in a position today to say that Professor Osswald's evidence as a whole is not credible. Mr Silverleaf submits that the court can and...
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...credibility of Mr Seitnepesov can or should be assessed at this stage. I note the conclusion of Birss J in Corma v Hegler Plastik [2013] EWHC 2820 (Pat) at [40]: “I must say, if I take the Professor's reports at face value, I believe they can be read in the manner proposed by Mr Silverleaf......