Shenzhen Carku Technology Company, Ltd (a company incorporated under the laws of the People's Republic of China) v The Noco Company (a company incorporated under the laws of Ohio, United States of America)
| Jurisdiction | England & Wales |
| Judge | Douglas Campbell |
| Judgment Date | 24 July 2020 |
| Neutral Citation | [2020] EWHC 2104 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2020-000018 |
| Date | 24 July 2020 |
[2020] EWHC 2104 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Remote Hearing by Skype for Business
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
RECORDER Douglas Campbell QC
(Sitting as a Judge of the Chancery Division)
Case No: HP-2020-000018
Mr. Hugo Cuddigan QC and Mr. Edward Cronan (instructed by Powell Gilbert LLP) for the Claimant
Mr. James Abrahams QC and Mr. Adam Gamsa (instructed by Taylor Wessing LLP) for the Defendant
APPROVED JUDGMENT
RECORDER Douglas Campbell QC:
In this action the claimant (“Carku”) is a designer and manufacturer of car battery jump start devices. The defendant (“NOCO”) is the proprietor of GB 2,527,858B (“the Patent”). This is an application for summary judgment or, alternatively, an interim declaration. I shall begin by setting out some background facts before focusing on these two applications.
Background
By claim form issued on 19 th May 2020, Carku seeks a declaration of non-infringement, relief for threats relating to the defendant's complaints to Amazon, and revocation of the Patent. More precisely, the declaration sought has two parts. One part relates to acts done in relation to “any version of the Carku module”. The other part relates to acts done in relation to “Carku 2014 power units”. One example given of a Carku 2014 power unit is the Carku E-Power 21.
The particulars of claim allege that the Carku 2014 power units do not infringe by virtue of section 64 of the Patents Act 1977. I no longer have to consider this section 64 point, since it was dropped for the purposes of this application on the day before the hearing. However, the Carku E-Power 21 itself remains relevant.
Annex A to the particulars of claim gives more information about the Carku module. It says that there are three versions thereof, namely:
(a) ‘Current Carku module A’, as found in at least three named existing Carku products. One example is the Carku 12V/24V Jump Starter.
(b) ‘Current Carku module B’, as found in at least six named existing products. One example of this is the Carku E-Power-Elite.
(c) ‘Proposed Carku module’” about which no further information is given. I need not consider this last one further.
Paragraph 6 of this Annex A says as follows:
“The Carku module has a reverse polarity sensor connected in circuit with the positive and negative polarity outputs, configured to detect the polarity of the vehicle battery connected between said positive and negative polarity outputs. The signal from this sensor is only used to determine whether an LED indicating reverse polarity is to be illuminated or not. The signal is not used in any other way.”
The word “only” is italicised in the pleading.
Paragraph 18 of the same document states as follows:
“The IJC provides a forced start: When the vehicle battery is dead or completely empty, the user can choose to force the connection of the internal power source to the output ports by pressing the TEST key. This forced connection operates independently of the connection described in paragraph 10 above.”
On 9th June 2020, Carku issued an application notice seeking an order that the products identified in Schedule 1 to the draft order do not fall within the scope of protection of the Patent: see box 3 of the application notice and also paragraph 1 of the draft order. Neither the application notice nor the draft order referred to validity or to the issue as to whether a valid claim was being infringed. The draft order did refer to CPR Parts 24.2(a)(i) and 25.1(1)(b), thereby making it clear that the claimant sought summary judgment and an interim declaration.
In opening its application the claimant submitted that it might seek some different order in relation to the summary judgment application depending on my judgment. I asked the claimant to identify any alternative form of wording which it had in mind, in order that both the defendant and I could consider that alternative wording. The claimant did not suggest any specific alternatives.
The products identified in Schedule 1 to the order do not obviously correspond to those listed in Annex A to the particulars of claim. For instance, none of the examples I have given from Annex A is mentioned here. Instead, there are 29 products, including, for instance, the Ring RPPL200, Ring RPPL300 and Tacklife T8 Max. Some products appear multiple times: for instance, the Grepro 500A appears four times. It is still not clear to me why it appears four times.
The application was supported by the first witness statement of Mr. Ari Laakkonen, a partner in the claimant's solicitors, and the first witness statement of Michael Zhang, Chief Executive Officer of the claimant. These were dated 9th and 8th June 2020 respectively. In answer, the defendant served the first witness statement of Mr. Christopher Thornham, a partner in the defendant's solicitors, and the first witness statement of Professor Marc E. Herniter, a Professor of Electrical and Computer Engineering. These were both dated 14th July 2020.
No objection was taken by the claimant as to Professor Herniter's evidence being expert evidence which required the court's permission under Part 35.4(1), nor was any objection taken on the grounds that it contained experiments for which the court's permission is required under CPR Part 63PD paragraph 7.1. The claimant said that it did not want to take what it called “procedural points”. The defendant explained that this evidence should be taken as indicating the nature of the expert and experimental evidence upon which it might rely at trial. Given the absence of any objection from the claimant, I will rely upon it in the way the defendant suggested.
The claimant subsequently served an amended version of Mr. Laakkonen's first statement on 14th July and a second witness statement from Mr. Laakkonen on 17th July. It also served a first witness statement of a Xingliang Lei on 18th July. The claimant further served a document entitled “Confidential Interim Product and Process Description” on 14th July, which was signed by Bei Ye. Bei Ye was described as a Patent Engineer. The claimant later served an amended version of the confidential interim PPD on 18th July 2020.
At the hearing before me yesterday, I asked what Bei Ye's role was at Carku. I was told that she was the head of Carku's R&D. It seemed to me at the time this was a reasonable basis for supposing that Bei Ye would know whether the technical content of the document which she signed was accurate. However, this morning I was sent a letter by the claimant's solicitors telling me this information was incorrect. Ms. Bei Ye is not the head of R&D at all. Instead she manages intellectual property matters. The same letter also included a witness statement from Ms. Bei Ye.
I have never come across an interim PPD before, and neither had counsel for the defendant. Paragraph 2 of the interim PPD states as follows:
“This PPD is interim in nature and provides, together with Annex A to the Particulars of Claim, the information necessary to assess infringement of claim 1 of GB Patent No. 2 527 858 (the Patent) on the Claimant's application for interim relief dated 9 June 2020 (the Application).”
Hence paragraph 2 itself envisages that the content of the document may be wrong, since it is only “interim”.
The original version of the interim PPD was served at or about the same time as the defendant's evidence in answer. The defendant told me — and the claimant did not dispute — that when originally served the original PPD had no Annex A, this being a confidential circuit diagram. Hence although the original confidential interim PPD was supported by the statement of truth signed by Bei Ye, it was unclear whether Bei Ye saw the Annex A circuit diagram prior to signing.
Today in the witness statement from Ms. Bei Ye, to which I have already referred, she says that when she received the interim PPD for signature it was not provided with a copy of that Annex, which she calls “Circuit Diagram A”. She thought it was going to be annexed. She adds in paragraph 7 of her statement that when making the unamended interim PPD, the circuit diagram was included because in her view it was representative of all Carku jump starter circuits. She does not explain how she came to that view. The amended version of the interim PPD now has Annex A, and a new Annex B which is another confidential circuit diagram.
The amended interim PPD in some respects corrects mistakes in the original which became apparent from the evidence of Professor Herniter. I call them “mistakes” because they are, but the claimant put it differently. For instance, my attention was drawn to a letter from the claimant's solicitors dated 17th July 2020...
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...of the inventive concept, are also liable to require expert evidence, see Shenzhen Carku Technology Co, Ltd v The Noco Company [2020] EWHC 2104 (Pat), at [29] and [75]. (3) However, where the words of the claim which are relevant to the issues of construction and/or infringement arising in......