INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL
B e f o r e :
| F H BRUNDLE (a private unlimited company)
- and -
- and -
(1) BETAFENCE LIMITED
(2) BRITANNIA FASTENERS LIMITED
The Defendant appearing in person
Jeremy Heald (instructed by Wake Smith LLP) for the First Third Party
Hearing date: 23rd January 2014
Crown Copyright ©
Judge Hacon :
"FAO: Chief Executive/Chairman
Notice Before Proceedings
Infringement of Patent GB2390104, 4 August 2003 - October 2011 Through Sales Of Betafence's Nylofor 3D Bracket And 3M Panel
Claim for Damages Under the Patents Act 1977.
I have written to your Company in the past to see if you would have any interest in stocking any of my fencing products and your reply was that you didn't sell any of these products or that type of fencing and your Company had no interest.
It has now been brought to my attention that your Company has been selling a product of Betafence known as Nylofor 3D bracket that is used to install Nylofor fencing, for over at least 5 years, according to your Southampton office and you in fact still sell these products.
This Nylofor product infringes my Patent and I demand that you provide an Account of Profits of direct profit on sales of:
1. The quantity of the Nylofor 3D bracket you have sold between August 2003 – October 2011.
2. The number of Nylofor 3M fence panels that have been sold during the same period that are installed using the Nylofor bracket.
3. The number of fence posts sold corresponding with the number of fence panels sold during the same period.
4. The quantity of add on products sold such as the allen key tool specifically designed to use with the Nylofor 3D bracket.
I am legally entitled to a share of these profits whilst the Patent was in force and which is currently being restored to the register, as it had lapsed temporarily due to Patent Office error in late 2011.
I intend to take proceedings against your Company in the High Court if no amicable solution can be reached regards paying me my share of the profits for your use of my inventions without any licence to do so. Please respond within 14 days or I will commence proceedings against your Company.
"Para. 6 Just to clarify, according to you, your client will be ignoring the Cease and Desist Notice and will continue to sell the infringing products. As you and your client both take the Patent Infringement very seriously, you will be providing the information I have asked you for and in the meantime I will put a hold on taking any legal proceedings against your client."
"In your initial letter you are claiming 'unjustified threats of legal action for alleged patent infringement' and I pointed out that your client may still have a liability to me between 2004 – 2011 whilst the Patent GB2390104 was in force, …"
Counterclaim and Part 20 Claim
Opinion of the IPO under s.74A of the Act
Lapse of the Patent
Issues set out at the CMC
1. Do the letters sent by D to C constitute a threat of proceedings for patent infringement?
2. Is C a person aggrieved by D's threats?
3. Were the threats unjustified as a result of the lapse of the Patent before the making of such threats?
4. Is any of the products in respect of which threats were made a product falling within the claims of the Patent, namely:
a. the Nylofor 3M fence panel
b. the Nylofor 3D bracket ("Beam" form); and/or
c. the Nylofor 3D Bracket ("Universal" form)?
5. Do C's acts in respect of which proceedings were threatened by D constitute an infringement of the Patent?"
Application to transfer
Do the letters sent by D to C constitute a threat of proceedings for patent infringement?
Is Brundle a person aggrieved by the threats?
The Patent having lapsed before the making of the threats
Does any of the products complained of fall within the claims of the Patent?
(i) A bracket for securing a fence panel to a fence post
(ii) the bracket being adapted to embrace a corner of a fence panel
(iii) and comprising a main body having a rectangular central portion
(iv) adapted in use to lie along the top of the panel
(v) and two contiguous triangular portions
(vi) adapted in use to lie one each side of the panel
(vii) with one apex adjacent the post and the other spaced therefrom,
(viii) and flange means
(ix) adapted in use to lie against and be attached to the post.
The Law on Construction
Person skilled in the art
Characterising the elements of claim 1
The implied qualification in 'suitable for' claims
" … Perhaps more importantly in this particular case, it is important not to take the meaning of "suitable for" too far. Mr Antony Watson QC, who argued the case on the 324 Patent for Qualcomm with Mr Thomas Hinchliffe, started from the premise that an apparatus did not cease to infringe merely because it was switched off. So an apparatus for toasting bread infringes whether connected to the mains or not. He says this is just one example, and there is a general principle that an apparatus is still suitable for performing a particular function if it can be readily modified so as to perform that function. Mr Silverleaf accepts that a claim will be infringed if all that is required is to supply power. But he contends that modifications to the apparatus are not what is contemplated by "suitable for".
 I think Mr Silverleaf is right. Supplying power to a toaster does not change the apparatus: it simply puts into use the apparatus which is there already. The question in each case is whether the apparatus, as it stands, is suitable for use in that way. If the apparatus has to undergo physical modification before it can be used, then prima facie it is not suitable for use and does not infringe."
Features (iii), (v) and (viii)
Features (i), (ii), (iv), (vi), (vii) and (ix)
"The bracket fits over the entire corner of the fence panel and not just one surface so that when fence panels and posts are joined with the fence bracket the entire fence structure becomes increasingly stable, rigid, strengthened and is less prone to damage from splitting of the fence panel or post timber."
The wooden fence
Features (ii), (iv) and (ix)
Conclusion on infringement