Icescape Ltd v Ice-World International BV and Others
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lord Kitchin,Lord Justice Longmore |
| Judgment Date | 10 October 2018 |
| Neutral Citation | [2018] EWCA Civ 2219 |
| Court | Court of Appeal (Civil Division) |
| Docket Number | Case No: A3/2017/0813 |
| Date | 10 October 2018 |
[2018] EWCA Civ 2219
Lord Justice Longmore
Lord Kitchin
and
Lord Justice Floyd
Case No: A3/2017/0813
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION, PATENTS COURT
John Baldwin QC
[2017] EWHC 42 (Pat)
Royal Courts of Justice
Strand, London, WC2A 2LL
Daniel Alexander QC, James Tumbridge and Ashton Chantrielle (instructed by Venner Shipley LLP) for the Appellants
Douglas Campbell QC (instructed by Clarke Willmott LLP) for the Respondent
Hearing dates: 26th–27th June 2018
This appeal concerns a system for cooling mobile ice rinks. The appellants (collectively “Ice-World”) make mobile ice rinks and lease them to third parties. They are the proprietors of EP (UK) 1,462,755 entitled “Cooling member for a mobile ice rink” (“the patent”). The patent claims a priority date of 24 March 2003.
The respondent (“Icescape”) operates mobile ice rinks and also leases those ice rinks to third parties. For a time and following the acquisition of the business of an unrelated company, Icescape operated a mobile ice rink made and leased to it by Ice-World. When that relationship came to an end, Icescape designed, made and began to operate its own mobile ice rink, and it was these activities which led to these proceedings.
In May 2015 Ice-World wrote to Icescape asserting that Icescape's mobile ice rink infringed the patent. Then, in May 2016 Ice-World sent letters to Icescape and a large number of its actual and potential customers asserting infringement. In June 2016 Icescape issued these proceedings complaining of the May 2016 letters and seeking relief for groundless threats of infringement, revocation of the patent and a declaration that none of its activities infringed the patent. Revocation was sought on the ground that the patent was not entitled to its claimed priority date and that it was invalid as a result of Ice-World's own prior uses. Ice-World responded, disputing that the patent was invalid and alleging infringement. It accepted that it had written threatening letters but maintained that those threats were justified. It also contended that if, contrary to its primary case, the patent was invalid, it had a defence to the claim for threats under s.70(2A) of the Patents Act 1977 (“the 1977 Act”) on the basis that it did not know and had no reason to suspect that the patent was invalid in that respect.
The action came on for trial in December 2016 before Mr John Baldwin QC sitting as a deputy judge of the Patents Court of the High Court. It lasted for three days. It was common ground by that stage that the patent was invalid if it was not entitled to its claimed priority date. It was also common ground that the letters constituted threats of patent infringement proceedings. So the issues for the judge were:
i) whether the patent was entitled to priority;
ii) whether the mobile ice rink made by Icescape fell within the scope of the patent;
iii) whether, on the assumption the patent was invalid but, had it been valid, would have been infringed, Ice-World had a defence to the claim for unjustified threats under s.70(2A) of the 1977 Act.
The judge gave judgment on 23 January 2017 ( [2017] EWHC 42 (Pat)). He found in favour of Icescape on each of the three issues before him. Ice-World now appeals to this court against his findings. I will deal with the three issues in turn but first I must say a little about the technical background and describe the disclosure of the patent.
The technical background
Mobile ice rinks comprise a refrigeration unit, a coolant, manifolds, an array of pipes and a pump which drives the coolant from the refrigeration unit through a feed manifold and into the array of pipes which extend under the ice field and then through a discharge manifold to the refrigeration unit. A typical arrangement of these components at the priority date is acknowledged in the patent and comprised a unit consisting of a series of parallel longitudinal pipes extending along the length of the ice field and, running in an orthogonal direction, a feed manifold and a discharge manifold. Pairs of parallel pipes could be connected together at one end by a U-shaped transverse pipe of some kind and could be connected at the other end by flexible pipe sections to the feed manifold or the discharge manifold. In this way and by the use of appropriate connections to either the feed or the discharge manifold, a fluid path for coolant could be formed from the feed manifold to the discharge manifold through two parallel and interconnected pipes. Further, a number of units could be arranged in series across the width of the ice field with their manifolds connected together by standard fluid tight connectors.
This general structure is also reflected in the judge's findings of the common general knowledge which he set out at [16]:
“16.1 Ice rinks are created by the distribution of and flow of coolant through an array of pipes embedded within a water surround.
16.2 In operation, coolant is distributed through the system using a pump and a cold feed line. Once the coolant arrives at the ice field it is distributed via a number of manifolds arranged in series, each of which contains a number of branches. For transport to and from site purposes, each manifold is limited in length to about 6m. These manifolds are also known as headers or collectors and when connected together they are laid one after the other down the width of the ice field.
16.3 The manifolds are connected to one another with an industry standard fluid tight connector, either a flange or other mechanical coupler.
16.4 Branches off the manifolds are connected to longitudinal pipes which are perpendicular to the axis of the manifold and travel across the length of the ice field.
16.5 These longitudinal pipes are laid by alternating a flow line next to a discharge (return) line in pairs. At the opposite end of the ice field from the manifold, a return connection is made between each pipe in a given pair using either a secondary manifold (with a series of branches) or an individual “u-shaped” coupling — either of which joins the flow and discharge pipes to each other to form a loop.
16.6 The coolant passes through the feed manifold, through the “out” longitudinal pipes, back through the associated “return” longitudinal pipes, back into the discharge manifold and then to the refrigeration unit for re-cooling and further circulation.
16.7 The lengths of the manifolds and longitudinal pipes are chosen based on convenience of transport and the size of rink required.
16.8 The individual lengths of the longitudinal pipes are connected and disconnected from each other on assembly and disassembly of the system.
16.9 Trucks for transporting mobile ice rinks and components thereof can typically deal with items several metres (say up to 7m) in length but not much longer.”
The problem with these prior art systems is described in the patent at [0003]. In summary, their installation and dismantling required all of their various components to be assembled and then disassembled and this was laborious, relatively time consuming and expensive. Further, leakage could occur as a result of the need to assemble all of the different components, and this could cause delay.
The patent
The invention of the patent addresses this problem and aims to provide a cooling member for an ice rink which can be installed (and dismantled) rapidly and which allows the rink to be made with different surface areas.
An embodiment of the claimed invention is illustrated in figure 8:
Various aspects of this arrangement merit description at his point. First, it includes multiple elements (41, 42) each of which has a feed manifold (43, 45) and a discharge manifold (44, 46). These multiple elements are placed adjacent to each other so that, in the words of the patent, the feed and discharge manifolds of the elements “ extend in the extension of one another in the transverse direction” and are “ provided with a coupling member (47, 48) to make a fluid-tight connection between the respective feed and discharge manifolds of the first and the second element”.
Secondly, a number of longitudinal pipes (50, 51) are connected to each manifold such that the feed pipes (50) are connected to the feed manifolds and the return pipes (51) are connected to the discharge manifolds, and these two sorts of pipe are connected to each other through the connecting pipe (63) and via the flexible connectors (65, 66).
Thirdly, each longitudinal pipe is made up of a number of rigid and mutually parallel series of pipe sections that are connected to one another in a fluid-tight manner via a joint member (70). This joint member is flexible and allows the connected pipe sections to fold relative to each other for the purposes of transportation. In the words of the patent at [0005]: “ Each longitudinal pipe comprises at least two rigid pipe sections that are connected to one another via a joint member such that they are fluid-tight, and wherein by moving the joint members a first series of parallel pipe sections can be placed in a transport position with respect to a second series of parallel pipe sections connected thereto, in which transport position the two series of pipe sections are at an angle with respect to one another or are positioned on top of one another, and can be placed in an operational position in which the two series of pipe sections extend in the extension of one another.”
The benefits of this system are described at [0006]. The cooling elements can be delivered in the transport position, for example folded on top of each other. Before transport, the pipe sections and joint members can be pressure tested for fluid tightness at a test...
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