Mmi Research Ltd v cellxion Ltd and Others

JurisdictionEngland & Wales
JudgeTHE HON MR JUSTICE FLOYD,Mr Justice Floyd
Judgment Date07 March 2011
Neutral Citation[2011] EWHC 426 (Pat)
Date07 March 2011
CourtChancery Division (Patents Court)
Docket NumberCase No: HC 2006 C02649

[2011] EWHC 426 (Pat)

IN THE HIGH COURT OF JUSTICE

CHANCERY DIVISION

PATENTS COURT

Before : The Hon Mr Justice Floyd

Case No: HC 2006 C02649

Between
Mmi Research Limited
Claimant
and
(1)cellxion Limited
(2)cellxion Networks Llc
(3)mark Brumpton
(4)datong Electronics Plc
(5)rohde & Schwarz Gmbh & Co. Kg
(6)Anthony Timson
Defendants

Martin Howe QC and Henry Ward (instructed by Charles Russell LLP) for the Claimant

Alastair Wilson QC and Simon Malynicz (instructed by Edwin Coe LLP) for the First to Fourth and SixthDefendants

Hearing dates: January 24 th to 26 th, 2011

Approved Judgment – Remitted issues

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.

THE HON MR JUSTICE FLOYD Mr Justice Floyd

Mr Justice Floyd :

Introduction

1

On 11 th March 2009 I gave judgment in this patent action brought by the claimant ("MMI") against the first to fourth and sixth defendants, to whom I refer as "the defendants". I found that the patent in suit, European Patent (UK) No 1 051 053, was valid and had been infringed by the first defendant's DX918 product. The patent is co-owned by MMI and the fifth defendant, Rohde & Schwarz. Rohde & Schwarz is the original patentee, but has taken no active part in the proceedings beyond giving disclosure of documents.

2

The defendants ran a multiplicity of attacks on the patent, all of which were unsuccessful. One of the attacks was that the patent was invalid for lack of novelty or obviousness over the prior sale of Rohde & Schwarz's own GA900 machine with or without its instruction manuals. I refused permission to appeal. The defendants applied to the Court of Appeal for permission to appeal. They also applied for permission to adduce new evidence which they said had been delivered to the first defendant anonymously after judgment. The Court of Appeal (Jacob LJ, Kitchin J), by a judgment dated 16 th October 2009, decided to admit the new evidence. By its order of the same date, the Court of Appeal remitted the matter to the Patents Court for me to try the issues which the new evidence raised. This is my judgment after the trial of the remitted issues. As before, Mr Martin Howe QC and Mr Henry Ward appeared for MMI; Mr Alastair Wilson QC and Mr Simon Malynicz appeared for the defendants.

The Judgment and Order of the Court of Appeal

3

The way in which the new evidence and its effect were described in the judgment of Jacob LJ is as follows:

"4. Two files (and we have seen the originals) are the instructions for the device in Italian and another file, rather thicker, with almost the same instructions in English. They were manuals. Along with the English version at least, is a floppy disk which has recently been read. There can be no doubt, and I do not think Mr Howe disputes it, that if this manual or the floppy disk had been prior disclosed to someone who was free in law and equity to use the information, the patent would lack novelty.

5. Mr Wilson particularly relies upon what he says is fairly obviously an event prior to the priority date of the patent, a certificate of compliance with an order from Rohde & Schwarz to a customer. The customer is not named but the order number is given and the document, which came in the English file, is dated 18/03/1998, which was before the priority date. Mr Wilson says the clear inference is that the recipients of this machine would have got the manual to go with it, that the document we have here is the manual that goes with it, that there is nothing about the manual being confidential, and that, accordingly, the recipient was a person free in law and equity to use the information. Likewise he says that the accompanying floppy disk also, when read, contains sufficient information to amount to an anticipation of the patent if it was part of the prior art. And the dates of the files on disk are all before the priority date."

4

I will refer in this judgment to the two sets of instructions as the Italian Manual and the English File. Jacob LJ also recorded what the court was told about the efforts made by the defendants at that date to authenticate the Italian Manual and the English File:

"They contacted two government security officers, one in Italy and one in Germany, who have said that they themselves received training manuals like these and did so before the priority date. It may be asked why they were not contacted before, particularly since, at least as far as the Italian is concerned, the defendants knew him rather well. Mr Wilson told us, upon instructions which I would expect to be verified by an affidavit, the Italian had been asked whether he had got a training manual and had refused to supply it. That is perhaps understandable from a government security officer. But once he had been shown the documents, which came from the brown envelope, he said, "Yes, that is the thing I had".

5

The Court of Appeal therefore decided to admit the fresh evidence. The instructions concerning the refusal of the Italian security officer to supply a manual before the trial were confirmed in an affidavit of Mr Timson dated 23 October 2009. Jacob LJ made it clear what he expected then to happen:

"10. So I would admit the fresh evidence. I will also require that the defendants plead exactly what it is they intend to prove. Speaking generally it seems to me it is the following. (1) the prior sale to the customer who is named on the certificate of compliance with the order together with the supply of the training manual. I would not allow the issue of whether you can work out what the machine does from the machine itself to be re-opened. (2) the supply of manuals to the Italian and German security officers. (3) I would also allow, to this extent and this extent alone, the issue of the Australian supply to be re-opened but with no further evidence from Australia. All that can be raised is the question of the inference to be drawn from the existing evidence in the light of the further evidence which comes before the judge.

11. All these matters would have to be pleaded out with considerable precision. Any further amendment must be regarded with utmost suspicion and only allowed in the most exceptional circumstances."

6

The Court of Appeal's order provided that:

"1. By 4 pm on 30 October 2009, the First to Fourth and Sixth Defendants shall serve on all the other parties a Re-Amended Grounds of Invalidity setting out precisely the nature of the said Defendants' prior use case based upon the following:

(a) The prior sale to the customer as allegedly evidenced by the certificate of compliance that was shown to the Court, together with the alleged supply of the Rohde & Schwarz GA 900 Manual and/or disk;

(b) The alleged supply of Rohde & Schwarz GA 900 Manuals to the Italian and German security officers identified in the Fifth Witness Statement of the Sixth Defendant.

2. The aforesaid Re-Amended Grounds of Invalidity shall not be amended save in the most exceptional circumstances.

3. The said Defendants to have permission to adduce fresh evidence relating solely to their case identified in the aforesaid Re-Amended Grounds of Invalidity

4. By 4 pm on 13 November 2009 the Claimant do serve a Re-Re-Amended Reply and Defence to Counterclaim (if so advised).

5. The claim be remitted to the Honourable Mr Justice Floyd for further directions and for a hearing on the issues identified in the pleadings referred to at paragraph 1 and 4 of this Order ("the remitted issues"), and for reconsideration of the issue of prior use in Australia having regard only to the evidence already given at the trial together with the facts (if they be established) that the Manuals and other material referred to above were supplied to customers (including the German and Italian personnel referred to above) without being marked with an indication of confidentiality, and such other inferences as may properly be drawn therefrom.

6. The issue of whether a user can work out what is the G8 900 machine does from the machine itself is not to be re-opened."

7

It is quite clear that the Court of Appeal, in giving permission to adduce fresh evidence, was also concerned to constrain the further hearing which was therefore rendered necessary within the tightest possible limits.

The original Judgment on the GA 900

8

This is what I said in my judgment of 19 th March 2009 about the GA900 manuals:

"[91] In my judgment, the GA900 manuals, if they were supplied to the Australian Government, were impressed with an obligation of confidence to R&S. They were marked confidential and there was other evidence to show that manufacturers regarded manuals of this character as being confidential. Mr Timson, for example, recognised that he should not have had an R&S manual. "

9

I also held that there was in the circumstances an obligation of confidence in relation to information to be derived from the machine, although a high-level description of the device, for example as an IMSI catcher, would not be confidential. Finally I held that the defendants had not established that a user of the machine could infer its method of operation merely from its possession and use.

The pleaded new case

10

The Re-Re-Amended Grounds of Invalidity, when served, contained the following three further paragraphs of particulars in addition to the four already pleaded:

"(v) The prior sale of the GA 900 as evidenced by the Fifth Defendant's "Certificate of Compliance with the Order" dated 18 March 1998 … together with the prior publication of a training manual and/or a computer disk by supply therewith, and the prior publication by training using the manual and/or disk;

(vi) The prior publication of a training manual for the GA 900 (accompanied, it is to be inferred by a GA...

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