Ronald Peter Binstead v Zytronic Displays Ltd
| Jurisdiction | England & Wales |
| Judge | David Stone |
| Judgment Date | 27 July 2018 |
| Neutral Citation | [2018] EWHC 2182 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: IP-2017-000218 |
| Date | 27 July 2018 |
[2018] EWHC 2182 (Ch)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Royal Courts of Justice
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
Mr. David Stone
(Sitting as a Deputy High Court Judge)
Case No: IP-2017-000218
Mr. Thomas St. Quintin (instructed by Potter Clarkson LLP) appeared for the Claimants
Mr. Jonathan Hill (instructed by Manches LLP) appeared for the Defendant
Approved Judgment
David Stone (sitting as a Deputy High Court Judge):
This is an application (made without the benefit of an application notice) to have certain matters determined as preliminary issues at a preliminary trial. The application is brought by the claimants Ronald Peter Binstead and Binstead Designs Limited (to whom I shall refer collectively as “the Claimants”), and is resisted by Zytronic Displays Limited (“the Defendant”). The Claimants are represented by Mr. Thomas St. Quintin and the Defendant by Mr. Jonathan Hill.
Background
It is common ground that on 16 November 1999, the First Claimant attended a meeting with the Defendant at the Defendant's premises, at which the First Claimant demonstrated a technique related to touch screen technology. It is not necessary for present purposes to discuss that technology in any depth. Following the demonstration, the Claimants granted a series of licences to the Defendant. Those licences have now come to an end.
The Claimants say the Defendant has continued to manufacture touch screens using the Claimants' technology. This is said to infringe the First Claimant's patent, as well as to be a breach of the licence agreements and a breach of confidential information provided by the Claimants to the Defendant. The Defendant denies these allegations, and seeks its own remedies, including a declaration of invalidity of the patent.
The Claimants propose that the following three issues be determined at a preliminary trial:
i) whether, and the extent to which, the Claimants developed the “Claimants' Confidential Technique” (as defined in the Particulars of Claim) prior to meeting with the Defendant in 1999;
ii) what was demonstrated to the Defendant at the Demonstration (as defined in the Particulars of Claim) which took place at a meeting between the parties in November 1999; and
iii) whether, and the extent to which, the Defendant owed the Claimants a duty of confidence in respect of the Claimant's Confidential Technique.
No witness statement has been filed by the Claimants. The Defendant relies on the second witness statement of its solicitor, Mr. George Festing.
The law
The court's jurisdiction to order the separate trial of a preliminary issue is not in doubt. The only question before me is whether, in the exercise of my case management responsibilities, it is appropriate to make the order for a preliminary trial sought by the Claimants.
In Steele v Steele [2001] CP Rep 106, Neuberger J (as he then was) set out, following a detailed examination of the law, those issues which he thought appropriate to a determination of whether or not a preliminary trial is appropriate. These were:
i) whether the determination of the preliminary issue would dispose of the case or at least one aspect of the case;
ii) whether the determination of the preliminary issue could significantly cut down the cost and time involved in pre-trial preparation or in connection with the trial itself;
iii) if the preliminary issue is an issue of law, the court should ask itself how much effort, if any, will be involved in identifying the relevant facts for the purpose of the preliminary issue;
iv) if the preliminary issue is an issue of law, to what extent is it to be determined on agreed facts;
v) where the facts are not agreed, the court should ask itself to what extent that impinges on the value of a preliminary issue;
vi) whether the determination of a preliminary issue may unreasonably fetter either or both parties or, indeed, the court, in achieving a just result which is, of course, at the end of the day what is required of the court at the trial;
vii) the court should ask itself to what extent there is a risk of the determination of the preliminary issue increasing costs and/or delaying the trial;
viii) the court should ask itself to what extent the determination of the preliminary issue may turn out to be irrelevant;
ix) is there a risk that the determination of the preliminary issue could lead to an application for the pleadings to be amended so as to avoid the consequences of the determination; and
x) taking into account the previous points, is it just to order a preliminary issue.
In a more recent judgment, Wentworth Sons Sub-Debt SARL v Anthony Victor Lomas and Others [2017] EWHC 3158 (Ch), Hildyard J referred to those 10 points and made clear that they should not be considered as “Ten Commandments”. Rather he said that the 10 points provide “useful criteria and a useful reminder of the caution and care to be exercised”.
In assessing those 10 points, though, it does seem to me that it is important to keep in mind the many preliminary issue trials which have not been a success. In Woodland Trust v Essex County Council [2013] UKSC 66 Lord Sumption set out in his judgment the unattractiveness of trying preliminary issues which are not decisive. He said at paragraph 2:
“The issue on the present appeal arises out of an allegation in the Appellants' pleadings that the Council owed her a ‘non-delegable duty of care’, with the result that it is liable at law for any negligence on the part of Ms. Burlinson or Ms. Maxwell. Langstaff J struck it out on the ground that on the pleaded facts the education authority could not be said to have owed a ‘non-delegable duty of care’. The Court of Appeal affirmed his decision by a majority (Tomlinson and Kitchin LJJ, Laws LJ dissenting). The appeal provides a useful occasion for reviewing the law on what have been called ‘non-delegable duties of care’. But it must be very doubtful whether deciding such a point on the pleadings was really in the interests of these parties or of the efficient conduct of their litigation. The pleadings are unsatisfactory. There are no findings of fact and almost everything is disputed. A decision of the point presently before us will not be decisive of the litigation either way, because there are other bases of claim independent of it. The point has taken more than two years to reach this stage, during which, if the allegation had been allowed to go to trial, it would almost certainly have been decided by now. As it is, regardless of the outcome of this appeal it will now have to go back to the High Court to find the relevant facts.”
In Rossetti Marketing Limited and Another v Diamond Sofa Company Limited [2012] EWCA Civ 1021, Lord Neuberger MR (as he then was) said this at paragraph 1:
“This is an appeal from a decision of Cranston J, determining certain preliminary issues arising out of a dispute between (i) Rosetti Marketing Limited (‘RML’) and Solutions Marketing Limited (‘SML’), and (ii) Diamond Sofa Company Limited (‘Diamond’). It represents yet another cautionary tale about the dangers of preliminary issues. In particular, it demonstrates that (i) while often attractive prospectively, the siren song of agreeing or ordering preliminary issues should normally be resisted, (ii) if there are nonetheless to be preliminary issues, it is vital that the issues themselves, and the agreed facts or assumptions on which they are based, are simply, clearly and precisely formulated, and (iii) once formulated, the issues should be answered in a clear and precise way.”
Lord Neuberger also dealt with the issue in Bond v Dunster [2011] EWCA Civ 455 at paragraphs 106–107:
“The first problem was that the parties agreed to the determination of preliminary issues. This appears to me to have been very unwise, given that the hearing was anticipated to last four days, and, it would seem, to involve oral evidence, much of it from parties or witnesses who could reasonably have been expected to give evidence at any subsequent hearing. By the time the preliminary issues hearing was intended to start, the proceedings would have already been on foot for nearly two years and the relevant events would have taken place nearly four years earlier.
While they have their value, it is notorious that preliminary issues often turn out to be misconceived, in that, while they are intended to short-circuit the proceedings, they actually increase the time and cost of resolving the underlying dispute. It would, in my judgment, require a very exceptional case, almost inevitably one where a subsequent multi-week trial was anticipated, before a preliminary issue hearing, involving witnesses and expected to last four days, could be justified.”
Lord Hope of Craighead said this in SCA Packaging Limited v Boyle [2009] UKHL 37 at paragraph 9:
“It has often been said that the power that tribunals have to deal with issues separately at a preliminary hearing should be exercised with caution and resorted to only sparingly. This is in keeping with the overriding aim of the tribunal system. It was set up to take issues away from the ordinary courts so that they could be dealt with by a specialist tribunal as quickly and simply as possible. As Lord Scarman said in Tilling v Whiteman [1980] AC 1, 25, preliminary points of law are too often treacherous short cuts. Even more so where the points to be...
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