England and Wales High Court (Patents Court) Decisions

1. On 22 January, I gave judgment for the plaintiffs, Coflexip, in this patent action. In accordance with normal practice, a draft of my judgment was supplied to counsel and solicitors of the parties two days in advance and, based on that, I was provided with a draft order I would be invited to make after judgment. However before receiving that draft I had informally brought counsel's attention to the decision of Scott V-C in The Staver Co. Inc. v Digitext Display Ltd. [1985] FSR 512, a case concerned, albeit at the interlocutory stage, with the scope and drafting of injunctions.

5. In finding for Coflexip, I have held that a major feature of the main claims is that substantially all of the tension exerted by the weight of pipe hanging below a marine pipe-laying vessel should be taken by a vertical array of tensioning devices on the vessel. This stops the pipe falling over the side of the vessel. Another important feature of the claims is that the flexible pipe to be laid by the vessel should be delivered into the sea down a substantially vertical ramp. Stolt Comex's pipe-laying ship, the Seaway Falcon, employs an arrangement in which virtually all the tension is taken vertically and there is a vertical ramp for laying the pipe. It may be that Stolt Comex will consider that a worthwhile modification to make to the Seaway Falcon is to take more of the tension horizontally. For example it is possible that they may decide to take 30% or 60% of the tension that way. Furthermore it is possible that they may decide to alter the angle of the ramp. For example they may decide to alter it so that it is at 150 to the vertical. If an injunction is limited to the current configuration of that vessel, any such modifications would not fall within it. If an injunction in the standard form is granted, it will be open to dispute whether it does or not.

7. Damages or an account of profits look to the past and are designed to compensate the plaintiff for the harm inflicted on him or to deprive the defendant of the benefit obtained by the activities performed in breach of the plaintiff's rights. The injunction looks to the future. Its purpose is to restrain threatened breaches of the plaintiff's rights. Normally, when a defendant has infringed, the court will assume it is not a one-off activity and will grant an injunction to stop repetition. This course is not inevitable. In a few cases courts have concluded that even though infringement has occurred, no future threat exists. In such cases, injunctive relief has been refused. Thus in Proctor v. Bailey and Son (1889) 6 RPC 538, the defendant had infringed a patent some six years before the trial of the action and that activity had lasted a very short time. The Vice Chancellor of the Duchy of Lancaster had granted and injunction. The Court of Appeal overturned that decision. Cotton LJ said:

8. In at least one patent case, Raleigh v. Miller (1949) 66 RPC 23 at 43, an injunction was refused where there had been only one act of infringement and the judge thought that the defendant did not intend to infringe anybody's rights. Instead leave was granted to apply for an injunction if there was any threat to infringe in the future. A similar course has been adopted in trade mark and passing off cases: Treasure Cot Co. Ltd. v. Hamley Bros. Ltd. (1950) 67 RPC 89 and Wayne V. Myers Co. Ltd. v. L.E. Fields Auto Services Ltd. (1954) 71 RPC 435. In the last few days, Park J. has also refused to grant injunctive relief to a plaintiff who had succeeded, at least in part, in a design right infringement action. In Frayling Furniture v. Premier Upholstery Ltd the infringement had occurred some five years before the trial and had not been repeated. In a supplemental judgment given on 21 January, Park J. said:

9. This ties in with the approach taken to quia timet relief. The necessity of showing the existence of a threat was referred to in a colourful passage during the argument in K.S. Paul (Printing Machinery) Ltd v. Southern Instruments (Communications) Ltd. [1964] RPC 118 at 122:

10. The same point was made by Lord Dunedin in A.G. for Canada v. Ritchie Contracting Supply Co. [1919] AC 999:

12. The court has not considered, let alone determined, whether and what other activities infringe. This point can arise in any intellectual property right litigation but it is particularly significant in patent litigation. It sometimes happens either shortly before or during the course of a trial that the patentee finds another, different, activity of the defendant which he wants to add to the particulars of infringement. Because the issue of infringement may raise new questions of fact and involve expert evidence, it is common for the courts to decline leave to amend the pleadings if that course is likely to prejudice the trial date. The plaintiff will have to start separate proceedings if, notwithstanding his success in the first action, the defendant insists on maintaining his right to continue with the second activity. There is nothing abusive in the defendant deciding to take that position. Even assuming it is not open to him to challenge again the validity of the patent (an issue which does not arise here for consideration), it is legitimate for him to argue non-infringement. In relation to that, no question of issue estoppel or res judicata arises.

15. This is not a merely theoretical objection. The scope of protection can be one of the most difficult issues in patent litigation. It must be determined in accordance with the provisions of section 60 of the Act and the Protocol on Interpretation. A purely linguistic approach to the claims will not do as was pointed out by the House of Lords in Catnic v. Hill & Smith [1982] RPC 183. A purposive construction has to be adopted. What that means was explained by Hoffmann LJ, as he then was, in Improver Corporation v. Remington Consumer Products Limited [1990] FSR 181. The result is that, particularly at the edges of a patent claim, the question of infringement can raise fine points of technology and require the assistance of expert evidence. Mr. Watson argued that deciding the issue of infringement under the 1977 Act is even more difficult than it was under previous legislation. However, whether that is so or not is not the important factor. Whatever the position was under the pre-EPC law, the scope of protection obtained by a valid patent can now be difficult to determine.

16. A defendant who has been enjoined must know what he can and cannot do. He should not be set a puzzle. As noted above, in most cases the precise outer limits of a patent claim are far from clear. This is confirmed, if any confirmation is necessary, by the numerous cases in which the finding on infringement arrived at by the High Court is reversed in the appellate courts. A good example of this is Catnic. There the finding of infringement in the High Court was overturned by a majority of the Court of Appeal and, in turn, unanimously restored by the House of Lords. An injunction not to infringe a patent incorporates all this imprecision.

17. The reluctance of the courts to grant imprecise injunctions has been commented on particularly in two areas; breach of confidence actions and where mandatory injunctions are in issue. In relation to breach of confidence, for example in Potters-Ballotini Ltd. v. Weston-Baker [1977] R.P.C. 202, Denning M.R. said:

2. While in relation to mandatory judgments, in Morris v. Redland Bricks Ltd. [1970] AC 652, Lord Upjohn said:

18. The first of these cases was at the interlocutory stage and, in any event, only was concerned with confidential information. In such cases the scope of the plaintiff's rights are notoriously hard to define. But that is a matter of degree only. To the extent that an injunction granted to restrain infringement of patent is obscure, the same criticism applies. Furthermore the fact that Potters-Ballotini was a judgment given at the interlocutory stage does not undermine its relevance. The objection at that stage is that the court had not determined whether the plaintiff has any rights or whether the specific acts of the defendant infringes them. So when an interlocutory injunction is granted it should be expressed in terms which make it clear what the defendant can or cannot do, without reference to rights which have not been established at that stage. Of course, once the validity of the rights and the fact of infringement has been proved at the trial, this objection disappears in relation to the particular acts of infringement which the court has ruled upon. But in relation to possible acts of infringement which have never been threatened by the defendant nor considered by the court, the same objection applies and for the same reason.

19. Similarly, the underlying principle in Morris v. Redland Bricks Ltd appears to me to have application outside the area of mandatory injunctions. As Lord Upjohn pointed out (at p. 667 A) where the mandatory injunction is very easy to understand and needs no further elucidation, there is no objection on this ground to granting it. The same applies to many negative injunctions. But where the injunction asked for is obscure in extent, then it does not matter whether it is mandatory or negative, the court should either not grant it at all or, where possible, express it in terms which meet the precise needs of the plaintiff.

20. The question of clarity is tied to the issue of enforcement. What happens if the defendant wishes to operate a new process or make a new product which, though different to the ones the subject of the original proceedings are still arguably within the scope of the patent? If he adopts the new process or product he is at risk not only of damages or an account but of being held in contempt of court. If he uses again the same process or makes the same products as were the subject of the original proceedings, the issue of infringement has been determined against him and, subject to appeal, is res judicata. But this is not so in relation to the new process or product which is different to the one dealt with in the proceedings. If he goes ahead and adopts the new process or product, he runs the risk of sequestration, fines or, in the case of personal defendants, imprisonment. Furthermore in any contempt proceedings the issue of whether there has been infringement will have to be determined. This is most unsatisfactory. For example in Electronic Applications (Commercial) Ltd. v. Toubkin and Anor [1962] R.P.C. 225, Wilberforce J said:

21. Once again, this was a case of an interlocutory injunction, but the embarrassment would arise because on the committal, the existence of the plaintiff's rights and their infringement would have to be resolved. This is because on committal the court would be asked to rule on the breach of the injunction by actions of the defendant in respect of which there was no existing and binding finding of the court that there had been a breach at all. I can see no difference in principle when one is considering those areas of a general injunction which prevent a defendant from doing something he has not threatened to do and which the court has not considered, let alone ruled on. Very similar objections to those raised in Electronic Applications (Commercial) Ltd. have been mentioned in a number of cases including The Staver Co. Inc. v Digitext Display Ltd. [1985] FSR 512, P.A. Thomas v. Mould [1968] 2 Q.B. 913, Berkeley Hotel Co. Ltd. v. Berkeley International (Mayfair) Ltd. [1972] RPC 237 at p. 239 line 36, Liverpool Household Stores Association v. Smith (1888) 37 Ch. D. 170 and Potters-Ballotini.

22. The problems which can flow from granting an injunction in broad terms and then allowing what is essentially a new action for infringement to be tried in the course of contempt proceedings can be seen by following the bizarre progress of the proceedings in Multiform Displays Ltd. v. Whitmarley Displays Ltd. (1955) RPC 256 (High Court), 321 (Court of Appeal), 358 (High Court), [1957] RPC 137 (High Court), 260 (House of Lords), 401 (High Court). In the House of Lords, Viscount Simonds understated the position:

25. This is clearly a major point, particularly if the grant has caused and is likely to cause no difficulty in practice. Injunctions in broad general terms have been granted by judges of the greatest eminence over the years. It clearly would be wrong to change a settled practice on a whim. In the area of equitable relief, as in all others, judges are meant to apply uniform standards and uniform principles. It would be unacceptable if it became impossible for parties to make a reasonably accurate prediction as to the form relief will take if infringement of the plaintiff's right is established. Parties need to be able to plan ahead even before judgment is given. But although injunctions have been granted in wide terms in patent actions in the past it appears that their terms have seldom if ever been the subject of detailed consideration. As Mr. Christopher Wadlow put it in his book, The Law of Passing Off (First Edn. 1990 - Sweet & Maxwell p. 465 footnote 34):

26. A defendant who has been held to infringe a valid patent but wants to stay, without further infringing the patentee's rights, in the same line of business using a similar but non-infringing product or process is presented with two choices, assuming that he does not take the path of least resistance and just give up. If he is advised by his lawyers that his new product or process is non-infringing, he can just re-enter the market. However he does so at considerable risk. If his lawyers' assessment is wrong he will still be in contempt. The error of judgment in the legal advice he received goes only to mitigation: see Re the Mileage Conference Group of the Tyre Manufacturers' Conference Ltd's Agreement [1966] 1 WLR 1137 and, more generally, A.G. v. Times Newspapers Ltd. [1992] 1 AC 191 at 217-8 per Lord Oliver. In fact he would be in contempt even if the original injunction in force at the time of his new venture is discharged on appeal: see Wardle Fabrics v. Myristis Ltd. [1984] FSR 263, followed by Scott J. as he then was, in Columbia Pictures Inc. v. Robinson [1987] 1 Ch. 38. See also Multiform Displays Ltd. v. Whitmarley Displays Ltd. [1957] RPC 401. The risk of being held in contempt and the adverse publicity likely to be generated by being accused of being in contempt will put all but the most determined off taking this course.

27. The obvious alternative is to hold back and go to court to ask for confirmation that the new venture does not breach the injunction. The first stage would be to ask the plaintiff for confirmation that the new process or product does not infringe. In my experience that has always proved a futile inquiry. Either the plaintiff answers by saying that the product or process infringes or it simply refuses to state its position. The defendant must therefore go to court to ask for clarification of his position. After all, why should the plaintiff ease the path for his competitor. That course was sanctioned by Scott V-C in The Staver Co case. It was a course which was taken by the defendant in Filhol v. Fairfax [1990] RPC 79. There a defendant who had lost an action concerning the design of dental pins used to create foundations for false teeth wanted to get onto the market with a product which was designed so as to avoid the construction of the patent claims found by both the High Court and the Court of Appeal. The patentee refused to acknowledge that the new product was outside the patent claims and the injunction granted and proceedings had to be brought for a declaration of non-infringement. Those proceedings were successful. I understand that a second non-infringing product was subsequently designed by the defendant. Once again the patentee refused to acknowledge non-infringement. Further proceedings had to be commenced although at that stage the patentee relented. Adopting this course is likely to mean that the defendant is kept off the market for a period of months or possibly years while the issue of whether he will be in contempt is decided. During that time he is not protected by any cross undertaking in damages. Both he and the public are the losers.

30. The most important part of Mr. Miller's submission, and the one that he returned to a number of times, was that a successful patentee in a patent infringement action could not be adequately protected without an injunction in general terms and that if I refused to make an order in such terms I would be depriving his clients of their victory. In support of this he reminded me of, but did not take me to, Spectravest Inc v Aperknit Ltd [1988] FSR 161 in which Millett J, as he then was, said:

32. So, if no such allegation of threatened or likely recidivism can be levelled at the defendant personally, Mr. Miller relies on the Spectravest approach. Patent infringers as a group are to be expected to try to find colourable or devious ways of infringing a patent, even if they have already lost a patent infringement action. I reject this approach to the grant of injunctive relief. I respectfully agree with Millett J. that there are certain copyright or trade mark infringers and some traders who engage in passing off who have shown themselves to be untrustworthy. Some of those who engage in the illicit manufacture, importation or sale of counterfeit goods including unlicensed copies of films, sound recordings, software and the like may well have commenced business in the knowledge that they were flagrantly infringing the relevant plaintiffs' rights. In most such cases the defendants also know of the well-advertised campaigns undertaken to discover their activities and have taken pre-emptive steps to hide their activities. I would respectfully agree with Millett J. that in such cases the plaintiffs may not be adequately protected by orders which are cabined or confined. Wider injunctions may be the only reasonable way of giving the plaintiffs the protection they need. The wide-ranging orders obtained by copyright collecting societies are examples of that.

33. But to go from that to the general proposition that all infringers of intellectual property rights are to be treated as devious and that plaintiffs need much wider orders in intellectual property cases to protect them against future ingenious, but yet unthought of, acts of infringement is unjustified. It comes close to asserting class guilt. Most losing defendants, even in passing off and copyright claims, are perfectly respectable and honest traders. Few businessmen are interested in knowingly infringing valid intellectual property rights. See, for example, Park J's comments in Frayling Furniture set out in paragraph 8 above. If I consider patents alone, in 30 years experience of litigation in this area, I have never come across a defendant who engaged in infringement knowing that what he was doing was wrong. They all thought that they either did not infringe or the patent was invalid or both. Most of those who lose think that they have been unlucky or worse. I never came across a defendant who, having lost, expressed any desire to take the risk of infringing again. The costs of patent litigation are too high. There is, I think, only one reported case of such an infringer. In any event, Mr. Miller's whole approach is wrong. When the court is asked to grant an injunction in a patent action, it is not considering the actions of an anonymous member of a uniform class of infringers. It has to consider the facts of the particular case and the behaviour, both past and threatened, of the particular defendant. As Cotton LJ said in Proctor v. Bailey, it is necessary to consider all the circumstances of the case before deciding what is the correct injunction to grant. It cannot be right to simply treat all patent infringers as bad apples.

34. It will be understood from what is set out above that I do not accept that the plaintiff is not adequately protected by a narrow form injunction. On the other hand steps should be taken to avoid incurring unnecessary costs and wasting court time if the defendant decides to embark on a Mark II venture. Although it is not right that the priority treatment given to contempt motions should be used to furnish quick decisions on new infringements, it would be wasteful if the plaintiff had to commence infringement proceedings de novo. It appears to me that where a narrow injunction is granted it may be appropriate for the order to include an express liberty to apply so that possible new infringements can be determined in the same proceedings against the background of the expert and factual evidence already given in relation to the first infringement. If the Mark II is a modification which meets the letter of the existing injunction but not the spirit of the judgment, the defendant's ploy will be short lived. I would expect the plaintiff to seek and obtain interlocutory relief. It is to be expected that since only infringement is in issue the hearing under the liberty to apply would be short and could come on rapidly. If it is obvious that the modification is an infringement, not only will the Mark II be enjoined but the court might then think that the Spectravest approach is appropriate and will grant a wider form of relief. In addition to this the court may order costs to be paid on the higher scale and may also be sympathetic to an application for an order for lump sum costs under the provisions of Order 62 R. 7(4)(b). In order to facilitate any such renewed application to the court, I am prepared to put an express liberty to apply into the Order to be made in this case so that Coflexip does not need to issue a new writ.

35. The considerations which I have set out above have also been the subject of considerable discussion in Australia. For the purpose of this judgment I will only refer to a few of the reported cases. In Schindler Lifts v. Deblak (1989) 15 IPR 129, Pincus J in the Federal Court of Australia was considering wide-ranging allegations of defamation, inducing breach of contract and misleading or deceptive representations contrary to the Trade Practices Act 1974. Although he found for the plaintiff, he declined injunctive relief. Amongst other things he said:

36. In Trade Practices Commission v. Glo Juice Co. Pty. Ltd. (1987) 9 IPR 63, a decision of Burchett J. in the Federal Court of Australia, the only issue before the judge was the form of injunction to be granted against a party found to have breached the Trade Practices Act, 1974, a statute in Australia which prohibits misleading or deceptive commercial conduct. This issue was the subject of argument over seven days. The whole judgment rewards reading. For present purposes it is sufficient to quote a few passages from it.

37. Having cited the following paragraph from the judgment of Bowen CJ in World Series Cricket Pty Ltd v Parish (1977) 16 ALR 181:

6. He then quoted with approval the following passage from the unreported judgment of Woodward J. in Australian Transport Insurance Pty Ltd v Graeme Phillips Road Transport Insurances Pty Ltd:

41. I am of the view that it would not be appropriate in the circumstances of this case to grant an injunction simply to restrain infringement of Coflexip's patent. It appears to me that if, as Cotton LJ said in Proctor v. Bailey, the purpose of an injunction "where a wrongful act has been done" is to prevent "a repetition of that wrongful act", prima facie it is not appropriate to grant an injunction against some other act, particularly one which has not been threatened, let alone determined to be wrongful. All of the possible modifications referred to in paragraph 5 above were ones put forward to illustrate the argument. There is nothing to suggest that any of them will be adopted by Stolt Comex. At the moment there is nothing to suggest that they will make or use any apparatus which could arguably be said to fall within the scope of Coflexip's patent. The injunction in this case should be limited to the acts of infringement proved.