Global Flood Defence Systems Ltd and Another v Van Den Noort Innovations BV and Others
| Jurisdiction | England & Wales |
| Judge | Judge Hacon |
| Judgment Date | 29 January 2015 |
| Neutral Citation | [2015] EWHC 153 (IPEC) |
| Docket Number | Case No: IP14M01776 |
| Court | Intellectual Property Enterprise Court |
| Date | 29 January 2015 |
[2015] EWHC 153 (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: IP14M01776
Douglas Campbell (instructed by) Shakespeares for the Claimants
Tom Alkin (instructed by DTM Legal LLP) for the First and Second Defendants
Hearing date: 21 January 2015
Introduction
This is an application by the claimants for summary judgment in relation to their allegation against the first and second defendants of unjustified threats of proceedings for patent infringement. Proceedings against the third defendant have been settled. Hereafter 'the defendants' should be taken to mean just the first and second defendants. There are other allegations against the defendants raised in the Particulars of Claim, not relevant to the application for summary judgment, and there is a counterclaim.
The application was heard at the same time as the case management conference. The parties agreed that I should decide first whether the claimants should have summary judgment before finalising directions in the CMC.
Background
The claimants are companies in the same group. They are in the business of selling flood defence products. The first defendant is a Dutch company which competes in the same business. The second defendant is the owner and managing director of the first defendant.
Between 23 November 2010 and some point between December 2013 and February 2014 the parties co-operated by means of an exclusive patent licence agreement between the first defendant and the first claimant. The first defendant's patent rights are based on PCT application WO2009/139622A1 from which European Patent Application No. 2315880 was derived, among other rights. The agreement licensed the first claimant to sell a flood defence device known at the 'self closing flood barrier', referred to by the parties as the 'SCFB'.
The parties fell out. The licence agreement came to an end at a date no later than 18 February 2014. The claimants stopped selling the SCFB and instead began to sell an alternative flood defence product, the 'self activating flood barrier' or 'SAFB'. I say an 'alternative' product: the defendants submit there is nothing significantly different between the SCFB and the SAFB whereas the claimants say that in relation to the European Application there is a crucial difference – the SCFB falls within the claims and the SAFB does not. For reasons that will become apparent I will not resolve that dispute in this judgment.
The defendants objected to the claimants' continued activity in the flood defence market. Three notices were put on the first defendant's website alleging infringement of their patents ("the Website Notices"). The second defendant also became aware of a reception organised for 11 March 2014 at the House of Commons entitled "Britain Prepared – A Flood Resilient Society" at which Frank Kelly, chief executive officer of the second claimant, was due to speak. On 3 March 2014 the second defendant sent a letter by email to Sir Peter Luff MP, one of the organisers of the event, complaining about the second claimant and its infringement of the first defendant's patent rights.
On 6 May 2014 the claimants issued the claim form and filed Particulars of Claim alleging, among other things, that the Website Notices and the letter to Sir Peter Luff contained groundless threats of infringement proceedings. By an application notice dated 17 October 2014 the claimants seek summary judgment in relation to that part of their case.
The defendants do not deny that the Website Notices and the letter contain threats within the meaning of s.70(1) of the Patents Act 1977 ("the Act") or that the claimants are persons aggrieved by the threats within the meaning of s.70(2). The defendants say that all the threats are justifiable and that there is a defence to each of them pursuant to s.70(2A).
The threats
The copy of the first of the Website Notices in the evidence was taken from the first defendant's website on 17 February 2014. It was in relevant part as follows:
"Important message
We are sorry to inform you that we have terminated the cooperation with Global Flood Defence Systems Ltd by the first of January 2014.
Global Flood Defence Systems LTD in the UK is therewith not longer allowed to manufacture, marketing and distribute the Self Control Flood Barriers.
Infringements of our patents by any party, which have not explicit our written approval, will be prosecuted by court."
The copy of the second Website Notice in the evidence was dated 4 March 2014. It was headed "Important warning with regard to global Flood Defence Systems!" and stated that licences granted to the claimants had come to an end. It went on as follows:
"Global Flood Defence Systems Ltd and UK Flood Barriers Ltd are, however, still marketing the Self Closing Flood Barrier as is shown on their website.
At this stage, we have taken legal proceedings against Global Flood Defence Systems Ltd and UK Flood Barriers Ltd for infringing our patent rights as well as our intellectual property rights.
Under these circumstances we need to advise you that Infringements of our patents by any party (also buyers), without our explicit and written approval, will be brought to court."
The letter to Sir Peter Luff MP of 3 March 2014 included this:
"We have seen an invitation of UK Flood Barriers for the reception of "Britain Prepared — A Flood Resilient Society on the 11 March 2014 at the Churchill Room, House of Commons, London SW1A 0AA.
On the list of speakers we see Mr. Frank Kelly CEO of UK Flood Barriers. Therefore it is our duty to warn you that Mr Kelly will speeks in his presentation about the Self Closing Flood Barriers, he is not allowed to do this and will probably suggest the stakeholders that Global Flood Defence Systems Ltd or UK Flood Barriers Ltd are the inventors and / or own the IP of these or same specific barriers.
At this moment we have taken proceedings against Global Flood Defence Systems Ltd for infringing our patents and the intellectual property rights.
We will warn you that infringements of our patents by any party (also buyers), which have not explicit our written approval, will be prosecuted by court.
The new distributor of the Self Closing Flood Barriers (SCFB) for the UK and Ireland is FloodControl International Ltd at Tavistock, Devon.
When you need more information please contact us or our Sollicitor Mr. Richard Arnold from Quality Solicitors Wilson Brown at Kettering rarnold@qswblaw. com."
There was a third notice put on to the home page of the first defendant's website on about 7 March 2014 but it adds nothing.
The defence to the claim for threats of infringement proceedings
To date the first defendant has no granted patent with claims that cover the claimants' flood defence products in the UK. However, it owns European Patent Application 2315880, which designates the UK, and asserts that it has the contingent right to claim relief in relation to the sale of such products pursuant to s.69 of the Act:
69. (1) Where an application for a patent for an invention is published, then, subject to subsections (2) and (3) below, the applicant shall have, as from the publication and until the grant of the patent, the same right as he would have had, if the patent had been granted on the date of the publication of the application, to bring proceedings in the court or before the comptroller for damages in respect of any act which would have infringed the patent; and (subject to subsections (2) and (3) below) references in sections 60 to 62 and 66 to 68 above to a patent and the proprietor of a patent shall be respectively construed as including references to any such application and the applicant, and references to a patent being in force, being granted, being valid or existing shall be construed accordingly.
(2) The applicant shall be entitled to bring proceedings by virtue of this section in respect of any act only —
(a) after the patent has been granted; and
(b) if the act would, if the patent had been granted on the date of the publication of the application, have infringed not only the patent, but also the claims (as interpreted by the description and any drawings referred to in the description or claims) in the form in which they were contained in the application immediately before the preparations for its publication were completed by the Patent Office.
The defendants say that once EPA 2315880 has matured to grant they will be entitled to bring proceedings against the claimants in relation to sales of their flood defence products between the publication of EPA 2315880 and the grant of the patent because if the patent had been granted on date of publication of the application, those sales would have infringed both the claims of the patent and the claims of EPA 2315880 (in the form they took immediately before the preparations for its publication).
A claim raised under s.69, where there is no granted patent, is necessarily contingent: it depends among other things on (a) the patent being granted and (b) the granted claims being in a form which covers the product or process complained of.
The defendants say this makes no difference – s.70(2A) of the Act still provides a potential defence sufficient to defeat a claim for summary judgment.
Section 70(1) and (2) of the Act provide for the right to sue a party making threats of bringing proceedings for patent infringement and claim relief:
70. (1) Where a person (whether or not the proprietor...
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