Safestand Ltd v Weston Homes Plc
| Jurisdiction | England & Wales |
| Judge | Mr Campbell Forsyth |
| Judgment Date | 10 May 2023 |
| Neutral Citation | [2023] EWHC 1098 (Pat) |
| Docket Number | Claim No. HP-2021-000042 |
| Court | Chancery Division (Patents Court) |
| Year | 2023 |
[2023] EWHC 1098 (Pat)
Mr Campbell Forsyth
Sitting as a Deputy Judge of the High Court
Claim No. HP-2021-000042
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS
OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
The Rolls Building
7 Rolls Building
Fetter Lane
London EC4A 1NL
Mr. Henry Edwards (instructed by DLA Piper LLP) appeared for the Claimant.
Mr. Jeremy Reed KC (instructed by Birketts LLP) appeared for the Defendants.
Hearing date 20 April 2023
APPROVED JUDGMENT
Introduction
This is a hearing dealing with two applications:
(i) The Defendant's have by an Application Notice dated 14 April 2023 (“the Defendants' Application”) requesting permission to reply on various experiments set out within its Re-Amended Notice of Experiments (“ANOE”).
(ii) The Claimant by its Application Notice dated 13 March 2023 (“the Claimant's Application”) requests specific disclosure of documents and data relating to experiments in the ANOE.
Together the two applications were originally estimated to take 2 1/2 hours. In the end the hearing lasted a day. Counsel for the Defendants confirmed his view that this was always at least a day's hearing, with half a day for reading. It is important for parties to liaise and update the court if, as matters develop, the time the court requires to read into and hear a matter is considerably longer than originally anticipated and listed.
These applications arise in relation to a claim for infringement of three patents and three reregistered design rights (the name given to UK comparable registered design rights granted to holders of Community Registered Designs under Schedule 1A of the Registered Designs Act 1949 due to Brexit). The Claimant is seeking various forms of relief including damages and an injunction. In turn, the Defendants have claims for the revocation of each of these patents based on their validity, are running a Formstein defence and pleads non-infringement of each of the patents in dispute. Additionally, the Defendant's claim the revocation of each of the reregistered design right and non-infringement.
Procedural History
The context of the present applications is of some relevance, in particular due to the timing of the current application for specific disclosure and the proximity of trial.
At the CMC Mann J ordered as part of the directions that where a party seeks to establish any fact by experimental proof, including an experiment conducted for the purposes of the litigation or otherwise (not being an experiment conducted in the normal course of research), that party must serve on all other parties a notice stating the facts which it seeks to establish and giving full particulars of the experiments proposed to establish them (sealed order 25 May 2022). Further to an order by consent sealed on 1 December 2022 the time for filing a Notice of Experiments was extended to 22 November 2022. The Defendants served their Notice of Experiments (“NOE”) on 22 November 2022 comprising Experiments 1 to 6. The Defendants' ANOE was served on 14 February 2023. The Defendants have applied to rely only on experiments 1 to 3 (“the Experiments”) as set out in its ANOE.
The order of Marcus Smith J on 23 December 2022 noted in the recitals that witnessed repeats of the Defendants experiments would take place on 23/24 January 2023 and provided that any Notice of Experiments in Reply be filed by 3 February 2023. The Claimant and the Defendants witnessed repeats of the Experiments on 23/24 January 2023 (“the Repeats”). The Defendants provided a report of the repeats of the Experiments on 14 February 2023 (“the Report of the Repeats”). No experiments in Reply were served.
The Claimant's Application was made on 13 March 2023. Expert reports were exchanged on 22 March 2023. The Defendants' Application was made on 14 April 2023.
The Claimant does not oppose the Defendants' Application. There was some discussion regarding the court placing potential conditions relating to the Claimant's Application on its consent to the Defendant's Application.
Responsive expert reports were exchanged on the 19 April 2023, immediately before the hearing of these applications. I was not provided with this further expert evidence. The pre-trial review in this case is in a window for a hearing between 16–18 May 2023. The trial is due to take place over a 7 day hearing in the window 7–21 June 2023. I was informed the matter was valued at less than £10m and therefore is cost budgeted. This is useful guidance for proportionality. However, this is clearly a significant and complex case.
The patents and case on infringement
Two of the three asserted patents in this case are relevant to these applications, being GB2378978 (“978”) and EP(UK)1660738 (“738”) together conveniently referred to as “the Trestle Patents”. For the purpose of this decision, the references below focus on issues in dispute relevant to the Trestle Patents unless stated otherwise. The Trestle Patents both relate to trestles for supporting workman platforms used on building sites. The claims for infringement/non-infringement are both to a normal construction and under the doctrine of equivalence and both under s.60(1) and s.60(2) of the Patents Act 1977. There is a dispute over the scope of the inventions and in particular the meaning of the term “builder's trestles”. This term appears in claims asserted for both Trestle Patents (as granted or as proposed to be amended).
The relevant general authorities and issues underlying these applications are not really disputed by the parties. Rather, it is the application of the law to the issues. In order to understand the context of these applications it is useful to consider a summary of some of the relevant background.
The Amended Particulars of Claim dated 2 September 2022 at paragraph 7 define the Defendants' “Kwik Kage System” (“KKS”) said to infringe the Trestle Patents. The Amended Defence and Counterclaim, and in particular paragraphs 16A-16C, detail grounds upon which infringement of the Trestle Patents is disputed – whether as a matter of normal construction or by way of equivalents. The statement of case explains that the KKS does not infringe because the main frames of the KKS attached to their starter plates (“Frames”) are not (or does not include) “trestles”. Such working platforms would need to have sufficient longitudinal stability to ensure they are safe in use and that without certain adaptations (cross-braces) the KKS would not be safe for use as a working platform as it would not have sufficient longitudinal stability.
The Reply and Defence to the Counterclaim has further relevant sections on these issues, in particular at paragraphs 3A, and 4A. In paragraph 3A.3 and in correspondence the Claimant denies that the degree of longitudinal stability of the Frames (with or without cross-braces) is relevant to the question of what constitutes a trestle or bandstand. However, the Claimant's made clear in submissions that regardless, this issue needed to be addressed to deal with the Defendants' case. There are also a number of requests for information that have been made under CPR Part 18 which include requests and responses relating to the inventive concepts of the Trestle Patents, the trestle stands and longitudinal stability.
The Re-Amended Product and Process Description re-re-served 24 February 2023 (“PPD”) provides details of two different sized Main Frames. The Standard Main Frame with a ‘short’ vertical length of 1498mm (“Standard Main Frame KKS”) and a shorter version with a vertical length of 589mm (“KK 600”). Both sized Frames are alleged to infringe the Trestle Patents, albeit the KK 600 is said to be part of a shorter production run and has been discontinued (although remains in use).
The Defendants' expert, Dr Lewis Santos, considers in his first report dated 13 April 2023 (“Santos”) under the section headed Patent Infringement how a skilled person would understand the meaning of the term “builder's trestle” from the Trestle Patents (Dr Santos deals with the 978 patent in the paragraphs set out below and later cross refers to this at [369] when considering integer 1A of the 738 patent).
“333. Integer 1A claims “A modular system comprising a plurality of builder's trestles”. In my view the skilled person would consider that this is not present in the Kwik Kage System. That is so because the skilled person would understand that a builder's trestle is a self-standing support for a platform which will (with other trestles) support the platform in normal use without the need for any additional structural support.
334. …..The skilled person would also understand that the feet of a trestle would extend a sufficient distance as a proportion of the height of the platform in order to provide the longitudinal stability necessary for the platform to be used normally and safely for tasks such as bricklaying or blockwork.”
Santos explains the KKS is alleged to infringe the Trestle Patents in the above context [328]. However, later in Santos the term KKS appears to be used sometimes only for the Standard Main Frame KKS. At paragraph 486 Santos explains his earlier evidence in the report related to the ‘full-size’ KKS (another way of referring to the Standard Frame KKS). If there is any imprecision in the use of the KKS definition between the Defendant's documents it does not impact on the assessments below as; (1) Santos in his analysis of infringement KK 600 does not identify any elements of the later analysis that differ from that earlier evidence on how the skilled person would understand the terms ‘trestle’, and (2) the term KKS in the statement of case and allegations of infringement...
To continue reading
Request your trial