Unilin Beheer Bv v Information Management Consultancy Ltd (T/A Responsive Designs)
| Jurisdiction | England & Wales |
| Judge | MR. JUSTICE LEWISON |
| Judgment Date | 18 November 2005 |
| Neutral Citation | [2005] EWHC 2776 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC05 C03176 |
| Date | 18 November 2005 |
[2005] EWHC 2776 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
Mr. Justice Lewison
Case No: HC05 C03176
MR. A. LYKIARDOPOULOS (instructed by Messrs. Bristows) for the Claimant.
MR. H. CUDDIGAN (instructed by Messrs. Wilmer, Cutler, Pickering, Hale & Dore) for the Defendant.
Approved Judgment
Transcribed from the digital recording by Marten Walsh Cherer Ltd., Midway House, 27/29 Cursitor Street, London EC4A 1LT. Telephone No: 020 7405 5010. Fax No: 020 7405 5026
The Claimant is the patentee of European patent EP1024234B1, which relates to a method of connecting floor panels made of hard material. The particular inventive concept embodied in the patent is that what has been called 'the short side' of the panels are capable of being snapped together without having to turn them. In the language of the claim the invention is characterised in that the coupling parts and locking means being formed out of the core are realised in such a manner that two of the floor panels can be engaged by shifting them laterally in a substantial planar fashion towards each other, thereby providing substantially by means of elastic deformation of the groove a snap-together connection in which the locking elements grip behind each other and in which the coupling parts and the locking means are configured such that the panels, in coupled condition at the related edges, are connected in a manner free of play.
The Defendant is an importer and supplier of flooring, and its principal customer at the moment is Homebase. In a previous action the Claimant sued the Defendant, together with others, for injunctions restraining infringements of the patent. The action came before His Honour Judge Fysh in the Patents County Court. The Judge, having heard a number of different arguments, granted an injunction which restrained the Defendant from infringing the claim, the substance of which I have read.
The Judge's Judgment was appealed to the Court of Appeal, and that court upheld the decision of Judge Fysh.
The Defendant has now begun to import a different product, also hard floor panels, in the belief that the new product did not infringe the patent, and consequently was not in breach of the injunction. The new product has been selling for about six months. Approximately 60 percent of the amount that the Defendant has ordered has already been sold to Homebase. Some 15 percent is in transit from China. It is due to arrive in this country today, and will be released to the Defendant in a very short time. The remainder is still in China, awaiting shipment.
The Claimant alleges that the new product is also an infringement of the patent, and has sought an order for the delivery up to the Claimant of all material which would infringe the patent, and a further order that the Defendant must give the Claimant full details of any orders of these products, and any other products with materially the same profile which are in transit.
The application is brought here, rather than in the Patents County Court, because His Honour Judge Fysh is not sitting, and there is no facility in the Patent County Court for a deputy to hear the case.
Mr. Cuddigan submits that the balance of convenience is all one way. So far as the Defendant is concerned, most of the product which has been ordered has already been sold. It is a small company, with profits which are likely to be wiped out if the order is granted. He says, and I accept, that severe damage would be caused to the Defendant's relations with a very substantial customer in the shape of Homebase. It follows, therefore, says Mr. Cuddigan, that the potential damage to the Defendant, if it is prevented from continuing to supply Homebase under orders already in place, is likely to be large �perhaps unquantifiable �and probably irreparable.
On the other side, the Claimant has granted a number of licenses to enterprises to manufacture the product covered by the patent in return for a royalty. The royalty is at a rate of some 22 pence per square metre, and if that rate were to be applied to the current shipment, the royalty payable would be of the order of �2,200. The royalty for the entirety of the product which the Defendant has ordered would be of the order of �14,300. Mr. Cuddigan therefore submits that so far as the Claimant is concerned, its real interest is money; the amount of royalty foregone is readily quantifiable, and that in any event the Claimant is a corporation of such a size as to make the potential loss of royalty virtually insignificant.
I agree with those submissions, and if the balance of convenience is the deciding factor in this case then it seems to me that the balance of convenience overwhelmingly favours the refusal of an injunction.
Is that the question? The court has already granted an order which precludes these Defendants from infringing the patent. In a sense, therefore, questions of the balance of convenience and the adequacy of damages as an appropriate remedy have already been considered. But, Mr. Cuddigan submits that they have only been considered in relation to a different product. No court has ever considered whether the product now being supplied does, or does not, infringe the patent. Consequently, in a true sense, this is an application for interim relief.
Mr. Lykiardopoulos, who appears for the Claimant, does not, I think, substantially dispute that proposition. Rather, he says, it is obvious that the new product is just as much an infringement as the product considered by Judge Fysh. The question in essence is whether the floor panels which the Defendant now supplies can be snapped together along their short sides. His clients have demonstrated in court today that if one panel is hammered along its short side, the short side at the opposing end of the panel will snap together with another panel.
Mr. Cuddigan's clients retort with another demonstration, showing that if one hits the long side of the panel with a hammer, it can also be made to engage with the long side of an adjacent panel.
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