In a judgment handed down on 9 October 2014, the Court of Appeal has confirmed the decision of Mr Justice Birss granting summary judgment in a claim for non-infringement of a patent.
The judgments may provide a useful route out of an infringement case for a party faced with a claim for infringement of a patent in a simple technology area, where the words of the specification and claim are easy to understand, there is no suggestion from either side that there are any terms of art involved and there is no point arising from the common general knowledge which needs deciding.
They also give some indication to patentees regarding how to structure their case to avoid a summary judgment application. However, the application and appeal were decided on the basis of a design for a non-infringing article put forward by the defendant, not the non-infringing article itself. If the defendant produces an article which is different from the design, the patentee will be able to assert the patent against that product, but the construction of those parts of the patent which were construed by the court are now res judicata between the parties, and generally in any case in which the patent is in issue.
The facts giving rise to the application
The case relates to plastic milk bottles. Nampak has a patent for a plastic container, which it asserted against Alpla's bottle called "ECO1". The trial of the ECO1 dispute is due in January 2015. In the meantime, Alpla designed a variant of the ECO1, the "ECO 2 design". Alpla then issued proceedings for a declaration of non-infringement in respect of the ECO 2 design and applied for summary judgment in those proceedings.
The facts at issue in the application
Claim 1 of the patent was split into 11 integers by Birss J., which can be found at paragraph 37 of his judgment.
In short, the claim required the bottle to have two pairs of opposing sides (G) of differing lengths (H), where the first pair was orthogonal to the second pair (I), four "truncated corners" between the two pairs of sides (J), and a pouring aperture (K). The only integer of claim 1 of the patent which Alpla asserted on the application as not infringed was integer K. Integer K required the "length of said first pair of opposing sides of said footprint is less than the diameter of the pouring aperture".
The dispute is perhaps best understood with reference to two figures showing the relationship of the diameter of the pouring opening to the length of a pair of opposing sides in the ECO 2 design. The figure on the left was submitted by Alpla, that on the right by Nampak:
The first pair of opposing sides are those to the left and right side of each figure (identified as "Alpla's 'K'" and "Nampak's 'K'" in the figures).
Alpla's position was that the length of the opposing sides was greater than the diameter of the pouring aperture (the red line on the left-hand figure is longer than the diameter of the hole).
Nampak's position was that the length of the opposing sides was less than the diameter of the pouring aperture (the length of the opposing sides defined as the distances "7" and "1" between the two pairs of lines on the right and left of the right-hand figure).
The decision of Birss J. and the Court of Appeal - did the ECO 2 design not infringe the patent?
When discussing the opposing sides, the patent noted that they might "define a slight curvature". Based on this disclosure, Birss J. held that "the sides referred to in claim 1 need not be straight, they may be slightly curved". On that basis, Birss J. stated that in order to determine non-infringement: "A skilled person would consider the question arising in this case by looking at the shape in plan view, just as in the figures in the patent. If pairs of opposing sides can be identified by observation then no problem arises".
Therefore, Birss J. held that the ECO 2 design "does not infringe because it does not satisfy feature K. The length of the first pair of opposing sides is greater than the diameter of the pouring aperture".
The Court of Appeal disagreed with the test Birss J. had applied, stating that: "The key question for present purposes, as it seems to me, is whether, at the point that the section of perimeter passes the extremity of the aperture, it is properly to be regarded as part of the side or part of the truncated corner". However, on the facts the Court of Appeal held that: "At the point at which the perimeter passes the extremity of the aperture it has departed less, not more, from the strictly perpendicular". That is to say, it was the Court of Appeal's view that the sides were longer than the diameter of the aperture, and so feature (K) was not satisfied. Even using this test, therefore, the ECO 2 design did not infringe.
So why did Birss J. and the Court of Appeal think it was appropriate to grant summary judgment in this case?
The leading judgment on summary judgment is that of the House of Lords in Three Rivers District Council v Bank of England. It states that the "criterion which the judge has to apply [in order to grant summary judgment] is not one of probability; it is absence of reality... [or] no realistic probability" of success. It is clear from previous decisions of the Court of Appeal that it is for the applicant to prove it is entitled to have the other side's case dismissed.
Summary judgment is often not appropriate in patent cases for the reasons set out by Mr Justice Arnold in Starsight v Virgin. Relying on two previous cases Arnold J. stated that the problem was that: "in order to determine even issues of claim construction and infringement, it is necessary for the court to adopt the mantle of the person skilled in the art. For that purpose, the court needs to receive expert evidence as to the common general knowledge as to the art in question at the relevant date."
However, this is not always the case - in Virgin v Delta Lord Justice Jacob stated that it might be appropriate to give summary judgment in patent cases where "the technology is relatively simple to understand". In those cases "there is really no good reason why summary procedure cannot be invoked".
In his judgment in the present case, Birss J. discusses the circumstances in which summary judgment might be appropriate in more detail. He makes the following points about why summary judgment was appropriate in this case:
- the technology is relatively simple to understand;
- the words of the specification and the claims are simple to understand;
- there is no suggestion from either side that there are any terms of art involved; and
- there is no point arising from the common general knowledge which has a bearing on the issue which Alpla's declaration requires to be decided.
Nampak's stated position was that it did not admit that the ECO 2 design does not infringe, and even after a request by Alpla for further information, Nampak stated that it had no positive case on the point at all. Birss J. did not find this an attractive position for a patentee to adopt. Birss found that Nampak did have a position, but, that it was not a sustainable one, for the reason set out below.
Nampak argued that it was not appropriate to determine whether the ECO 2 design did not infringe the patent at an application for summary judgment. This was because expert evidence was required relating to the behaviour of the ECO 2 on a packing line used to fill bottles with milk in order to determine whether it infringed.
Birss J. dismissed Nampak's arguments, stating that they were "too vague". In particular, he stated that Nampak had not adduced evidence or submissions regarding how the ECO 2 design would behave on the packing line. This is hardly surprising - the ECO 2 design was just that - a design, not an object, so it is difficult to see how Nampak could have adduced evidence of how it would behave on the packing line.
Nampak also argued that it needed further information regarding the dimensions of the ECO 2 design, but again: "nothing has been put before the court which explains how the outcome of any infringement analysis will depend on the results of the proposed detailed measurement experiments".
So what should Nampak have done to make the dispute unsuitable for summary judgment?
Looking at the four points made by Birss J. above, it is clear that nothing can be done by the patentee about the first two - they simply relate to the field of the invention and the way it is described and claimed.
As Birss J. points out in his judgment, the question is whether there is any evidence regarding the need for expert evidence to construe terms of art. The Court of Appeal puts further flesh on this requirement, stating that: "it is necessary for a party who claims that the court is inadequately equipped to decide an issue of construction to identify, perhaps only in quite general terms, the nature of the evidence of the common general knowledge which he proposes to adduce, and be in a position to explain why that evidence might reasonably be expected to have an impact on the issue of construction".
Birss J.'s judgment sets out clear guidelines, approved by the Court of Appeal, for when it might be appropriate to apply for summary judgment that a claim is not infringed.
Although not impossible, it seems unlikely that even after these judgments the summary judgment procedure will be used in relation to the validity of a patent - the heavy reliance on expert evidence renders it inappropriate for summary judgment.
The Court of Appeal has also provided useful guidance as to what is required to overcome such an application. While this is useful, it will of course mean that any summary judgment application will involve increased costs as patentees seek to adduce evidence regarding what kind of evidence will be required to correctly construe the patent.
Summary judgment is also available on 14 days' notice, which is not a particularly long time to put together the kind of evidence suggested by the Court of Appeal. This suggests that to mitigate against the risk of being incapable of answering a summary judgment application, patentees should search for an expert before commencing infringement proceedings, which would increase costs yet further. Ironically, of course, they would only need to do so in more simple claims.
This judgment is therefore likely to force patentees to further front-load costs, in particular in relation to the search for and instruction of an expert, as any point of construction decided at such an application will be res judicata between the parties. An application for a summary judgment of non-infringement may become a tactical move designed to force a recalcitrant claimant to crystallise its position on claim construction earlier than it otherwise might have done.
In his judgment Birss J. notes: "if... the court was able to make a declaration of non-infringement on the [ECO 2 design] now before the court but it turned out later that a product being sold by Alpla was not in accordance with [the ECO 2 design], then all that means is that the declaration does not cover that later product".
This is true, but not the whole truth. In the present case, the point of construction determined in relation to integer K will be res judicata between the parties and therefore will apply not only in relation to the ECO 2 design, but also to the ECO 1 bottle - the subject of the trial in January 2015. The determination will also be binding on Nampak and any other third party engaged in litigation against it in relation to the patent.