AP Racing Limited v Alcon Components Limited, UK, High Court (Intellectual Property Enterprise Court), HHJ Hacon, 15 May 2015
HHJ Hacon’s judgment in AP Racing v Alcon Components concerned an application to strike out AP Racing’s statement of case under CPR Rule 3.4(2)(b) – ‘that the statement of case is an abuse of the court’s process or is otherwise likely to obstruct the just disposal of the proceedings’.
In a judgment of 28 January 2014, the Court of Appeal ruled that certain specific disc brake callipers for cars produced by Alcon had infringed AP Racing’s UK Patent (No. 2 451 690) and that AP Racing was entitled to choose between an account of profits or an inquiry as to damages. Following the finding of infringement AP Racing sought disclosure to enable AP Racing to make its election between the two remedies.
In doing so AP Racing asked for disclosure both for sales of brake callipers which had been the subject of the decision on infringement and other brake callipers sold by Alcon. Alcon objected. AP Racing responded by dropping its request for disclosure beyond the callipers which had been the subject of the infringement decision and then brought a separate infringement claim against Alcon in respect of the other callipers. Alcon applied for this new case to be struck out.
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At the strike out hearing, AP Racing argued that it was not uncommon in the patent case law for newly alleged acts of infringement (including new evidence) to be brought up only at the damages enquiry or account of profits – citing in particular General Tire v Firestone Tyre [1975] RPC 203 and Unilin Beheer BV v Berry Floor NV [2007] EWCA Civ 364. AP Racing thus argued that if the introduction of the new claims should have been allowed at the inquiry stage, it could not be an abuse of process to make such claims in subsequent proceedings.
HHJ Hacon reviewed the decisions on “abuse of process” and the policies behind them that there should be finality in litigation and that a party should not be “twice vexed in the same matter” in particular referring to the decision of the House of Lords’ in Johnson v Gore Wood & Co [2002] 2 AC 1 which rejected the argument that just because a claim could have been raised earlier, it should have been brought earlier.
HHJ Hacon found that he would be able to dispose of the new proceedings, given the earlier proceedings, in about an hour, and that AP Racing had ‘enjoyed a causal disregard’ as to which callipers were involved in its original claim. In the judge’s mind, both of these findings led to the conclusion that AP Racing’s claim was not onerous on Alcon, and was not an attempt to harass, and, as such, he refused to strike out the claim as an abuse.
Judge Hacon’s decision highlights how practice in the patent courts in this area differs from that of the general courts. Although piecemeal litigation is strongly frowned upon and it was clear that AP Racing could have brought its claim in the first proceedings, the judge favoured the established practice of the patent courts and permitted the new litigation to proceed. In part this was because the judge accepted that any question regarding the additional infringements could be dealt with in a very short hearing and it was largely immaterial whether the hearing should happen in the earlier or the later proceedings.
Although the decision merely confirms existing practice, it does, however, highlight the importance of carefully identifying alleged infringements in proceedings so as to avoid the issues raised in this case.
Read the decision here.
Headnote: Nicholas Fox, Simmons & Simmons
