No use Nampak crying over spilt milk...
The Court of Appeal in Nampak Plastics Europe Ltd v Alpha UK Ltd has upheld a summary judgment application for a declaration of non-infringement in a patent dispute. The Court of Appeal was not
The Court of Appeal in Nampak Plastics Europe Ltd v Alpha UK Ltd has upheld a summary judgment application for a declaration of non-infringement in a patent dispute. The Court of Appeal was not satisfied that expert evidence, which would otherwise be adduced at trial, would impact upon issues of claim construction and infringement. The decision confirms that in instances where the technology of the patent in suit is simple, and the words of the claims are ordinary English words with no special or technical meaning, use of the summary judgment procedure to obtain a declaration for non-infringement is suitable.
Background
The Claimant in the original High Court proceedings was Nampak Plastics Europe Ltd ("Nampak"). Nampak manufactured moulded plastic milk bottles and was the proprietor of a GB patent for plastic milk container.
Nampak brought proceedings against Alpha UK Ltd ("Alpha") (a competitor of Nampak) asserting that Alpha's moulded plastic milk bottles infringed Nampak's patent. In response to proceedings being issued, Alpha re-designed its milk bottle to a design that it believed fell outside the claims of the patent in suit. In addition to re-designing its product, and in light of the commercial need for certainty, Alpha also sought a declaration from the Court that its re-designed bottle did not infringe Nampak's patent. Alpha sought the declaration of non-infringement by way of a summary judgment application, which was heard before Mr Justice Birss in June 2014.
High Court decision
Mr Justice Birss noted that summary judgment applications (where a judgment is given in one party's favour without a trial) are often not suitable in patent cases. This is because issues of claim construction and infringement are decided by the Court 'looking through the eyes of the notational person skilled in the art'. As expert evidence is often required to inform the Court as to the common general knowledge and attributes of the notional person skilled in the art, summary judgment applications will generally not be suitable in patent cases. However, Mr Justice Birss also noted previous Court of Appeal guidance, which stated that in cases where the technology is simple enough for the Court to grasp the case well enough without the need of expert evidence, there is no reason why the summary judgment procedure cannot be invoked.
In this case, the technology of the patent in suit (moulded plastic milk bottles) was simple and the claims could readily be construed by the Court without the need for expert evidence. Summary judgment was therefore appropriate in these circumstances. Mr Justice Birss went on to find that Alpha's re-designed product did not infringe the patent in-suit and granted Alpha a declaration of non-infringement.
Court of Appeal decision
Nampak appealed the decision on the grounds that Mr Justice Birss granted the summary judgment without the benefit of hearing expert evidence, which (as explained above) would impact on issues of claim construction and infringement.
Lord Justice Floyd (in a judgment agreed unanimously by the Court of Appeal) held that expert evidence is not required where the words of the claims are ordinary English words which have no special or technical meaning. In such circumstances, it is for the party opposing the summary judgment application to identify the type of expert evidence that might reasonably be expected to have an impact on the issue of construction. If that party were unable to do so, it was for the Court to conclude that they were merely hoping that "something may turn up", and such a defence does not have the necessary "reality" to avoid summary judgment.
In considering the claims of the patent in suit, Lord Justice Floyd held that the conclusions he reached were based solely on his reading of the specification, and that he was unable to see how they could be shown to be wrong by the evidence of an expert in plastic milk bottles. It was therefore for Nampak to show that there was at least some basis for supposing that expert evidence could alter the way in which the claims were construed, but they had not done so. As such, Lord Justice Floyd dismissed Nampak's appeal and upheld Alpha's declaration for non-infringement.
Comment
This decision confirms that the summary judgment procedure is as applicable to patent cases as any other. In many circumstances, it will be unsuitable due to the issues of claim construction and infringement being dependent on expert evidence. However, where the technology of the patent in suit is simple, and the words of the claims are ordinary English words with no special or technical meaning, applications for summary judgment on declarations of non-infringement may be a useful tool for parties defending patent infringement proceedings.
Background
The Claimant in the original High Court proceedings was Nampak Plastics Europe Ltd ("Nampak"). Nampak manufactured moulded plastic milk bottles and was the proprietor of a GB patent for plastic milk container.
Nampak brought proceedings against Alpha UK Ltd ("Alpha") (a competitor of Nampak) asserting that Alpha's moulded plastic milk bottles infringed Nampak's patent. In response to proceedings being issued, Alpha re-designed its milk bottle to a design that it believed fell outside the claims of the patent in suit. In addition to re-designing its product, and in light of the commercial need for certainty, Alpha also sought a declaration from the Court that its re-designed bottle did not infringe Nampak's patent. Alpha sought the declaration of non-infringement by way of a summary judgment application, which was heard before Mr Justice Birss in June 2014.
High Court decision
Mr Justice Birss noted that summary judgment applications (where a judgment is given in one party's favour without a trial) are often not suitable in patent cases. This is because issues of claim construction and infringement are decided by the Court 'looking through the eyes of the notational person skilled in the art'. As expert evidence is often required to inform the Court as to the common general knowledge and attributes of the notional person skilled in the art, summary judgment applications will generally not be suitable in patent cases. However, Mr Justice Birss also noted previous Court of Appeal guidance, which stated that in cases where the technology is simple enough for the Court to grasp the case well enough without the need of expert evidence, there is no reason why the summary judgment procedure cannot be invoked.
In this case, the technology of the patent in suit (moulded plastic milk bottles) was simple and the claims could readily be construed by the Court without the need for expert evidence. Summary judgment was therefore appropriate in these circumstances. Mr Justice Birss went on to find that Alpha's re-designed product did not infringe the patent in-suit and granted Alpha a declaration of non-infringement.
Court of Appeal decision
Nampak appealed the decision on the grounds that Mr Justice Birss granted the summary judgment without the benefit of hearing expert evidence, which (as explained above) would impact on issues of claim construction and infringement.
Lord Justice Floyd (in a judgment agreed unanimously by the Court of Appeal) held that expert evidence is not required where the words of the claims are ordinary English words which have no special or technical meaning. In such circumstances, it is for the party opposing the summary judgment application to identify the type of expert evidence that might reasonably be expected to have an impact on the issue of construction. If that party were unable to do so, it was for the Court to conclude that they were merely hoping that "something may turn up", and such a defence does not have the necessary "reality" to avoid summary judgment.
In considering the claims of the patent in suit, Lord Justice Floyd held that the conclusions he reached were based solely on his reading of the specification, and that he was unable to see how they could be shown to be wrong by the evidence of an expert in plastic milk bottles. It was therefore for Nampak to show that there was at least some basis for supposing that expert evidence could alter the way in which the claims were construed, but they had not done so. As such, Lord Justice Floyd dismissed Nampak's appeal and upheld Alpha's declaration for non-infringement.
Comment
This decision confirms that the summary judgment procedure is as applicable to patent cases as any other. In many circumstances, it will be unsuitable due to the issues of claim construction and infringement being dependent on expert evidence. However, where the technology of the patent in suit is simple, and the words of the claims are ordinary English words with no special or technical meaning, applications for summary judgment on declarations of non-infringement may be a useful tool for parties defending patent infringement proceedings.