Safestand Ltd v Weston Homes Plc
| Jurisdiction | England & Wales |
| Judge | Hacon |
| Judgment Date | 19 December 2023 |
| Neutral Citation | [2023] EWHC 3250 (Pat) |
| Year | 2023 |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2021-000042 |
[2023] EWHC 3250 (Pat)
HIS HONOUR JUDGE Hacon
(Sitting as a High Court Judge)
Case No: HP-2021-000042
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST
PATENTS COURT
Royal Courts of Justice, Rolls Building
Fetter Lane, London, EC4A 1NL
Andrew Lykiardopoulos KC and Henry Edwards (instructed by DLA Piper UK LLP) for the Claimant
Jeremy Reed KC and Nick Zweck (instructed by Birketts LLP) for the Defendants
Hearing dates: 8, 12–14 and 19 June 2023
Approved Judgment
This judgment was handed down remotely at 10.30am on 19 December 2023 by circulation to the parties or their representatives by e-mail and by release to the National Archives.
Introduction
Builders' trestles are scaffold-like structures. In series they support a platform on which workers can stand to gain access to a point of work in the construction or maintenance of buildings.
The claimant (“Safestand”) pleads infringement of three patents and three re-registered designs (“RRDs”), all concerned with builders' trestles.
The patents are:
(1) UK Patent No. 2 378 978 (“UK 978”),
(2) European Patent No. EP 1 660 738 B1 (“EP 738”) and
(3) UK Patent No. 2 420 822 (“UK 822”).
The RRDs, former Community Registered Designs, all have the title “Trestles for building industry”. They are:
(1) No. 9000229349001 (“RRD 0001”),
(2) No. 90003121450004 (“RRD 0004”) and
(3) No. 90003121450005 (“RRD 0005”).
The defendants (collectively “Weston”) deny infringement and counterclaim, seeking revocation of EP 738 and UK 822, both on the ground of lack of inventive step. In relation to the RRDs Weston counterclaim that each of them is invalid because the design registered lacks unity and/or clarity and because it lacks individual character over cited prior art.
Safestand has an application to amend UK 978. Weston does not resist it and the application has become unconditional. Weston has pleaded a counterclaim seeking revocation of UK 978 but this was withdrawn following the unconditional application to amend.
Safestand has a conditional application to amend EP 738.
After evidence was heard Weston conceded infringement of UK 822.
Andrew Lykiardopoulos KC and Henry Edwards appeared for Safestand, Jeremy Reed KC and Nick Zweck for Weston.
Weston's application to amend the Grounds of Invalidity
On the morning of the first day of the trial Weston filed an application notice seeking permission to re-re-amend their Grounds of Invalidity. They had discovered an article from Construction News dated 3 June 2004 containing a passage which, Weston said, led to a strong inference that there had been prior use by Safestand of the inventions claimed in EP 738 and UK 822, so both patents are invalid for lack of novelty. Draft Re-Re-Amended Grounds of Invalidity were provided.
Weston gave Safestand notice of their intention to make the application and why on the first morning of the trial. Safestand resisted the application.
The law
The parties were agreed that the authority of most relevance is the judgment of Carr J, as she then was, in Quah Su-Ling v Goldman Sachs International [2015] EWHC 759 (Comm). The claimant in that case sought to make what were conceded to be very substantial amendments to her case on the alleged misconduct on the part of the defendant in the sale of the claimant's shares. The application was made three weeks before the trial was due to start. The trial was vacated anyway because it was common ground that the defendant would not have enough time before the trial to respond to the amended Particulars of Claim if amendment were permitted and the claimant had said that if her application to amend were disallowed, she would abandon her claim. The application for permission to amend was dismissed.
Carr J said:
“[36] An application to amend will be refused if it is clear that the proposed amendment has no real prospect of success. The test to be applied is the same as that for summary judgment under CPR Part 24. Thus, the applicant has to have a case which is better than merely arguable. The court may reject an amendment seeking to raise a version of the facts of the case which is inherently implausible, self-contradictory or is not supported by contemporaneous documentation.
[37] Beyond that, the relevant principles applying to very late applications to amend are well known. I have been referred to a number of authorities: Swain-Mason v Mills & Reeve [2011] 1 WLR 2735 (at paras. 69 to 72, 85 and 106); Worldwide Corporation Ltd v GPT Ltd [CA Transcript No 1835] 2 December 1988; Hague Plant Limited v Hague [2014] EWCA Civ 1609 (at paras. 27 to 33); Dany Lions Ltd v Bristol Cars Ltd [2014] EWHC 928 (QB) (at paras. 4 to 7 and 29); Durley House Ltd v Firmdale Hotels plc [2014] EWHC 2608 (Ch) (at paras. 31 and 32); Mitchell v News Group Newspapers [2013] EWCA Civ 1537.
[38] Drawing these authorities together, the relevant principles can be stated simply as follows:
a) whether to allow an amendment is a matter for the discretion of the court. In exercising that discretion, the overriding objective is of the greatest importance. Applications always involve the court striking a balance between injustice to the applicant if the amendment is refused, and injustice to the opposing party and other litigants in general, if the amendment is permitted;
b) where a very late application to amend is made the correct approach is not that the amendments ought, in general, to be allowed so that the real dispute between the parties can be adjudicated upon. Rather, a heavy burden lies on a party seeking a very late amendment to show the strength of the new case and why justice to him, his opponent and other court users requires him to be able to pursue it. The risk to a trial date may mean that the lateness of the application to amend will of itself cause the balance to be loaded heavily against the grant of permission;
c) a very late amendment is one made when the trial date has been fixed and where permitting the amendments would cause the trial date to be lost. Parties and the court have a legitimate expectation that trial fixtures will be kept;
d) lateness is not an absolute, but a relative concept. It depends on a review of the nature of the proposed amendment, the quality of the explanation for its timing, and a fair appreciation of the consequences in terms of work wasted and consequential work to be done;
e) gone are the days when it was sufficient for the amending party to argue that no prejudice had been suffered, save as to costs. In the modern era it is more readily recognised that the payment of costs may not be adequate compensation;
f) it is incumbent on a party seeking the indulgence of the court to be allowed to raise a late claim to provide a good explanation for the delay;
g) a much stricter view is taken nowadays of non-compliance with the CPR and directions of the Court. The achievement of justice means something different now. Parties can no longer expect indulgence if they fail to comply with their procedural obligations because those obligations not only serve the purpose of ensuring that they conduct the litigation proportionately in order to ensure their own costs are kept within proportionate bounds but also the wider public interest of ensuring that other litigants can obtain justice efficiently and proportionately, and that the courts enable them to do so.”
In Nesbit Law Group LLP v Acasta European Insurance Company Limited [2018] EWCA Civ 268, the Chancellor of the High Court, with whom Sharp and Hamblen LJJ agreed, said:
“[41] The principles relating to the grant of permission to amend are set out in Swain-Mason and in a series of recent authorities. The parties referred particularly to Mrs Justice Carr's summary in Quah Su-Ling v. Goldman Sachs International [2015] EWHC 759 (Comm) at paragraphs 36–38 of her judgment. In essence, the court must, taking account of the overriding objective, balance the injustice to the party seeking to amend if it is refused permission, against the need for finality in litigation and the injustice to the other parties and other litigants, if the amendment is permitted. There is a heavy burden on the party seeking a late amendment to justify the lateness of the application and to show the strength of the new case and why justice requires him to be able to pursue it. These principles apply with even greater rigour to an amendment made after the trial and in the course of an appeal.”
Discussion
Having heard submissions on the first day of the trial, I told the parties that Weston's application was dismissed and that reasons would be given in this judgment. They follow.
I begin with Weston's prospect of succeeding in its proposed case for the anticipation of EP 738 and UK 822 due to prior use. The article, dated 3 June 2004, spoke of impending regulations which were to impose new safety requirements to protect individuals working at height. It stated that some contractors had already started to change their working practices and to seek new products. The article continued with a reference to a Wembley firm which by common consent was Safestand:
“… a Wembley firm has launched an alternative to the ‘bandstand’ trestle system for brickwork contractors. The Safestand system features telescoping steel rails which are fitted to standard scaffold boards to create a 4.5m guardrailed access platform.
The system has been tested to loads of 3.25 tonnes and does not need scaffold erection skills, said a spokesman. He said ‘It is impossible to use incorrectly and includes a securing bracket so you can't flip boards over if you step on the end.’”
The letter from Weston's solicitors...
To continue reading
Request your trial