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F H Brundle v Richard Perry and (1) Betafence Limited (2) Britannia Fasteners Limited, Intellectual Property Enterprise Court, 6 March 2014, [2014] EWHC 475 (IPEC), HHJ Hacon

Brundle (a wholesaler of metal products) succeeded in its action under section 70 Patents Act 1977 for groundless threats of patent infringement proceedings. Brundle relied on three letters it had received from Mr Perry (the defendant). In the first letter, Mr Perry stated that a product sold by Brundle infringed his patent for a fence bracket and that he intended to take legal proceedings if no amicable solution could be reached regarding paying him his share of the profits. The Intellectual Property Enterprise Court (IPEC) held that each of the letters each constituted a threat of proceedings (section 70(1) and (5)) and Brundle was a “person aggrieved” (section 70(2)). The Court went on to decide that the product did not infringe the patent, and, therefore, Mr Perry’s threats were unjustified and he had no defence under section 70(2A), and his counterclaim for infringement must also be dismissed. The Court further dismissed Mr Perry’s claim for infringement against two third parties, one of which was Brundle’s supplier of the product.

His Honour Judge Richard Hacon, recently appointed judge of the IPEC, referred to the Court of Appeal decision in Best Buy [2011] EWCA Civ 618 on when a communication contains a threat of infringement proceedings, noting that Best Buy was a trade mark case but the principle was the same in patent cases. He held that a threat may be implicit and the circumstances surrounding the communication are taken into account. In this case, the first letter actually contained an explicit threat, and the second and third letters would be read in the context of the earlier letter(s) and also contained threats. HHJ Hacon said it was well established (Brain v Ingledew [1997] FSR 511, approved in Best Buy) that if the threats are directed at the claimant, then the claimant will be a “person aggrieved” (and noting that in certain circumstances a claimant can be a person aggrieved even if the threats reached him indirectly).

When construing the patent claims to assess whether or not there was infringement, HHJ Hacon held that the law on construction was well established, following the principles set out in Kirin-Amgen [2004] UKHL 46, as summarised in Virgin v Premium [2009] EWCA Civ 1062. All the patent claims depended on claim 1, whose first feature was “A bracket for securing a fence to a fence panel” and certain other features were prefixed by “adapted in use to” (emphases added). To aid his construction, HHJ Hacon considered judgments on the meaning of the terms “for” and “suitable for” in a claim, including whether they introduced a subjective element. He construed “for” as “suitable for” (i.e. capable of, as opposed to intended for), and held that, in this case, it was to be assessed objectively. He held that “adapted in use to” meant the same as “suitable for”, and that these terms always introduced a qualification, saying: “It may be that the feature in the product alleged to infringe could fulfil the purpose stated in the claim, but only if certain further steps are taken. A point will be reached where the further steps required are such that the need for them renders the feature unsuitable for (or ill adapted to) that purpose in the mind of the skilled person. This will always be a question of fact and degree.” He referred to Floyd J’s judgment in Qualcomm v Nokia [2008] EWHC 329 (Pat), including the comment that (in that case) it was important not to take the meaning of “suitable for” too far.

Judgments on groundless threats are relatively rare, but the statutory provisions continue to operate as a trap for the unwary, or the ill-advised. In this case the defendant appeared in person which, together with the content of his letters, suggests he received no legal advice whatsoever. Few lawyers would be so bold to write, as Mr Perry did, “This Nylofor product infringes my Patent and I demand that you provide an Account of Profits”.

Read the judgment (in English) here.

Head note: Rowena Stent