Nampak Plastics Europe Ltd v Alpla UK Ltd
| Jurisdiction | England & Wales |
| Judge | Lord Justice Floyd,Lady Justice Macur,Lord Justice Briggs |
| Judgment Date | 09 October 2014 |
| Neutral Citation | [2014] EWCA Civ 1293 |
| Docket Number | Case No: A3 2014 2306 |
| Court | Court of Appeal (Civil Division) |
| Date | 09 October 2014 |
[2014] EWCA Civ 1293
IN THE COURT OF APPEAL (CIVIL DIVISION)
ON APPEAL FROM THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
MR JUSTICE BIRSS
Claim HP13 A04705
Royal Courts of Justice
Strand, London, WC2A 2LL
Lord Justice Briggs
Lord Justice Floyd
and
Lady Justice Macur
Case No: A3 2014 2306
Iain Purvis QC and Anna Edwards-Stuart (instructed by Bristows LLP) for the Claimant
Adrian Speck QC and Henry Ward (instructed by TLT LLP) for the Defendant
Hearing date: 18 September 2014
Introduction
This is an appeal by the claimant patentee ("Nampak") from a decision of Birss J dated 3 July 2014 by which he gave summary judgment to the defendant ("Alpla") in its action for a declaration of non-infringement of United Kingdom Patent No 2 494 349 ("the patent"). Nampak complains that the judge wrongly granted summary judgment without the benefit of hearing expert evidence which would throw light on the issues of construction and infringement and in consequence approached those issues on a basis which was at least arguably incorrect. Birss J granted permission to appeal. Mr Iain Purvis QC and Ms Anna Edwards-Stuart argued the case for Nampak. Mr Adrian Speck QC and Mr Henry Ward responded on behalf of Alpla.
The proceedings
Nampak began the present proceedings claiming that a first design of plastic milk bottle made and sold by Alpla, the ECO 1, infringed the patent. Alpla denied infringement and subsequently made an application for a declaration of non-infringement in respect of a proposed second design, the ECO 2, which it had not yet launched, no doubt hoping that the design changes introduced in the ECO 2 were sufficient to place the product outside, or as they would say, further outside the claims of the patent. Nampak having declined the invitation to acknowledge non-infringement, Alpla applied for summary judgment. We are only concerned on this appeal with the summary judgment application in relation to the ECO 2. The trial of Nampak's infringement action on the ECO 1 is fixed to come on in January 2015. In consequence we have heard this appeal with a degree of expedition (and in the vacation) in order to avoid potential disruption to trial preparation.
Nampak's pleaded case in its action for a declaration of non-infringement was that it did not admit that the ECO 2 was not an infringement of the patent. Following a request for further information, Nampak stated that it did not have a positive case on infringement. As the judge explained, this turned out not to be the case: Nampak's case before the judge was that the ECO 2 did infringe. Nevertheless the judge allowed Nampak to argue its positive case on infringement before him, as he considered that it would be unfair to refuse to do so. By its respondent's notice, Alpla argues that the judge was wrong to permit Nampak to advance a positive case, and it would not have been unfair to refuse to permit it to do so.
Summary judgment in patent disputes
The provisions of CPR Part 24 which allow for cases to be disposed of by summary judgment without a trial apply to patent cases as they do to other disputes. Applications for summary judgment in patent cases have not often met with success, however.
Thus, in Monsanto & Company v Merck & Co. Inc [2000] RPC 77 the issue was whether there was infringement by virtue of the presence of a compound at the final stage of a manufacturing process of the active ingredient, but not subsequently, when the claim required the use of the active ingredient "to prepare a medicament". Pumfrey J held that there was no infringement. He considered that the issue involved no more than the construction of the words of the claim, and there had been no suggestion that there was any evidence which could have a bearing on that issue. The Court of Appeal allowed the appeal. Aldous LJ, with whom Auld LJ agreed, took a different view of the construction of the claim from Pumfrey J, and said this:
"I do not believe that the judge was right to conclude that the alternative case put forward by the patentees is unarguable upon the assumed facts. Despite the view as to the meaning of claim 20 which I have expressed above, it would not be right, at this stage of the action, to come to any concluded view as to the ambit of claim 20. The patent must be construed as a whole and the claims interpreted according to the Protocol on Interpretation. The subject of the specification is complicated. To come to a concluded view, the mantle of a man skilled in the art must be adopted. That will require the aid of expert evidence."
Auld LJ agreed that it was necessary to construe the patent as a whole and to " don the mantle of the person skilled in the art". He said that it was:
"impossible at this stage of the action and certainly without evidence on the matter, to say that the plaintiff's case for the wider construction … is so plainly and obviously wrong that the claim should be struck out."
None of this goes as far as to suggest that in a straightforward case it may not be a legitimate exercise of the power in CPR Part 24 to grant summary judgment in a dispute about the construction of a patent. In Virgin v Delta [2011] RPC 18 Jacob LJ said this:
"Whilst the general rules as to summary judgment apply equally to patent cases as to other types of case, there can be difficulties, particularly in cases where the technology is complex. If it is, the court may not be able, on a summary application, to form a confident view about the claim or its construction, particularly about the understanding of the skilled man. On the other hand in a case such as the present, where the technology is relatively simple to understand, there is really no good reason why summary procedure cannot be invoked. No one should assume that summary judgment is not for patent disputes. It all depends on the nature of the dispute.
"That can cut both ways, of course. If the court is able to grasp the case well enough to resolve the point, then it can and should do so – whether in favour of the patentee or the alleged infringer."
However in Saleem Khatri v Cooperative Centrale Raiffeisen-Boerrenleenbank BA [2010] EWCA Civ 397, Jacob LJ also said (not this time in a patent case):
"Although a case may turn out at trial not to be really complicated, it does not follow that it should be decided without a fuller investigation into the facts at trial than is possible or permissible on an application for summary judgment. Thus the court should hesitate about making a final decision without a trial, even where there is no obvious conflict of fact, where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available to a trial judge and so affect the outcome of the case."
It is clear that the fact that a dispute involves the resolution of an issue of construction of a patent does not automatically render it unsuitable for summary judgment. However it is necessary to proceed with caution given that the court is not being called upon, when construing a patent, to decide what the words of the patent mean to it, but what they would have been understood to mean by the person skilled in the art: see per Lord Hoffmann in Kirin-Amgen Inc v Hoechst Marion Roussel ltd [2004] UKHL 46; [2005] RPC 9 at [32] – [33]. Such an exercise is dependent upon the identity of the person skilled in the art and the knowledge and assumptions which one attributes to him or her.
That said, it remains the law that expert evidence is not admitted as to the meaning of ordinary English words which have no special or technical meaning in the art. Once equipped with evidence as to the knowledge and assumptions of the person skilled in the art, the determination of the meaning which the words used in a patent claim would convey to one skilled in the art is for the court.
It follows from what I have said that, on a summary judgment application such as this, it is necessary for a party who claims that the court is inadequately equipped to decide an issue of construction to identify, perhaps in only quite general terms, the nature of the evidence of the common general knowledge which he proposes to adduce, and to be in a position to explain why that evidence might reasonably be expected to have an impact on the issue of construction. If that party is not able to do so, it is open to the court to conclude that he is simply hoping that "something may turn up" and that his defence does not have the necessary "reality" to avoid summary judgment under Part 24.
The patent
Given the very large number of plastic milk bottles manufactured each day, it is not surprising that manufacturers are keen to restrict so far as possible the amount of plastic used to make them whilst retaining sufficient structural integrity to make them fit for purpose. A blow-moulded milk bottle is manufactured from a "parison" which is a lump of plastic which is blown outwards from the centre towards the walls of a mould. As a consequence of this process, the parts of the mould which are furthest from the centre of the mould where the parison is initially placed are the most stretched and therefore thinned. In what the patent describes as a known container, the footprint is substantially rectangular in outline in plan view. Thus the corners are the furthest points from the centre and most subject to the thinning problem. The invention is said to provide a milk bottle that overcomes or mitigates this problem.
The patent...
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