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AP Racing Limited v Alcon Components Limited, High Court of Justice of England and Wales, Intellectual Property Enterprise Court (HHJ Hacon), London UK, 28 January 2016, Neutral Citation Number: [2016] EWHC 116 (IPEC)

In an inquiry as to damages, the Intellectual Property Enterprise Court (the “IPEC”) has awarded AP Racing Limited (“AP Racing”) almost £0.5 million for patent infringement by Alcon Components Limited (“Alcon”). Traditionally there have been relatively few damages inquiries for patent infringement in the English Courts, because parties would usually rather settle once liability is established, rather than endure another set of lengthy and expensive court proceedings. However, the streamlined nature of proceedings before the IPEC is changing this. Whilst the IPEC’s £500,000 damages cap does not make it suitable for all cases, the £50,000 costs cap and efficient procedures are making it a more attractive forum.

In 2012, AP Racing brought a claim against Alcon in the IPEC’s predecessor Court, the English Patents County Court (the “PCC”), for infringement of its patent protecting its RadiCal callipers, GB 2 451 690. The PCC found the patent infringed but invalid for added matter. AP Racing appealed and, in January 2014, the Court of Appeal found the patent valid, taking a more generous approach to the added matter issue.

In December 2015, His Honour Judge Hacon in the IPEC heard the damages enquiry – Alcon had elected for an inquiry as to damages, rather than an account of profits. AP Racing claimed: (i) lost profits from sales of callipers that AP Racing would have made had Alcon not infringed; (ii) lost profits from sales of other goods that would have been sold by AP Racing had the infringing sales of callipers not been made; and (iii) damages equivalent to the royalty Alcon would have paid in relation sales which did not result in AP Racing losing any sales.

Under the first head of damages, the judge determined the number of infringing callipers sold by Alcon in the relevant period, and the resulting number of lost sales by AP Racing (calculated by reference to its market share). He was then able to calculate the lost profit from such sales using the agreed sale price and profit figures. In relation to the second head of damages, Alcon accepted that some goods were exclusively associated with the sale of the callipers, and for some other goods there was a causative link with the sale of the callipers 70% of the time. The judge accepted these figures and calculated the additional lost profit. No additional royalties were awarded as the judge determined that of the remaining supplies made by Alcon, they were either made before the date of publication of the patent application or had been supplied free of charge to replace defective callipers. In total AP Racing was awarded damages of just under £500,000 plus interest.

Read the decision here.

Headnote: Emma Muncey and Rachel Mumby, Bristows LLP