England and Wales High Court (Patents Court) Decisions

Allergan Inc, Novartis AG, Chris Stean v. Sauflon Pharmaceuticals Limited [2000] EWHC Patents 168 (2nd February, 2000)

CH 1998 A 2508
CH 1998 S 4719

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

Mr Justice Pumfrey

BETWEEN

1. I direct that no official shorthand note shall be taken of this judgment and that copies of this version as handed down may be treated as authentic.

DATED 2 February 2000

1. I have already decided that this application to join Avizor, a Spanish company, as the second defendant to the allegations of infringement in this action should fail. These are my reasons for this decision.
    
2. The action is an action for infringement of three patents relating to the cleaning and disinfecting of contact lenses. The defendant sells a kit for the cleaning and disinfecting of contact lenses consisting of three components: a bottle of hydrogen peroxide solution, a lens carrier and tablets containing catalase. The catalase tablets are made by Avizor in Spain and imported by the defendant Sauflon Pharmaceuticals Limited. The tablets are packed in Spain in packaging suitable for Sauflon’s requirements. In the draft reamended particulars of infringements annexed to the application notice, the case against Avizor is pleaded as a case of joint tortfeasance with Sauflon as follows:

   The second defendant has, together with the first defendant, acted pursuant to a common design such that the second defendant is jointly and separately liable with the first defendant as a joint tortfeasor for all such acts of the first defendant as are set out [in the particulars of infringements so far as they affect Sauflon]. Hereunder, pending disclosure and/or responses to requests for further information, the plaintiffs and of each of them rely upon the following facts and matters set out below.

   There follow five paragraphs of particulars. Paragraphs (a) and (b) deal merely with the product concerned and with the negotiations between Sauflon and Avizor in relation to the possibility of supply of catalase tablets in the United Kingdom. Paragraph (c) is the heart of the allegations. It sets out in eleven numbered paragraphs extracts from correspondence and from reports of meetings which took place between Sauflon and Avizor and says that from these materials it is possible to draw the inference that Avizor were so involved with Sauflon in Sauflon’s acts of alleged infringement as to make them liable as joint tortfeasors.

3. No point is taken by Avizor in relation to the provisions of the Brussels/Lugano Convention. The only question with which I have to deal is whether this amendment should be allowed on ordinary principles. Sauflon and Avizor contend that the matters set out in the particulars cannot support an allegation of joint tortfeasors and that joinder should accordingly not be allowed. The particulars can conveniently be set out here. They are as follows.

   (c) In the course of negotiations relating to Catalase Tablets, the first and second defendants not only discussed such co-operation, but also exchanged relevant technical and commercial information, both at meetings and in correspondence. Pending disclosure and/or responses to requests for further information, the plaintiffs rely on the meetings and correspondence listed below.

   (i) A meeting in/or about the beginning of May 1994 between Mr Alan Wells ("AW") of the first defendant and Mr Santiago Nestares ("SN") of the second defendant in Milan, Italy at which such discussions and exchanges took place.

   (ii) A letter from AW to SN dated 20th June 1994. This states:

   "My proposals were that as small independent contact lens aftercare manufacturers, we should look for ways of co-operating which will be beneficial when fighting our big multi-national competition".

   It continues:

   "ENZYME TABLETS

   We would be interested in talking to you about taking these tablets from you to sell under our own brand in the United Kingdom".

   (iii) A meeting on 31st July 1996 between Mr Rolf Hamann ("RH") of the second defendant, AW and SN at the second defendant’s manufacturing plant in or near Madrid, Spain at which such discussions and exchanges took place.

   (iv) A letter from AW to RH dated 21st August 1996. This states:

   "On the other hand we believe that with our contacts in the UK market we can sell a considerable number of your one-step peroxide products. Our proposal was that we would manufacture your peroxide formula at our plant and purchase the tablets used with your formula, in bulk from Avizor.

   The products would be under the Sauflon name in the UK and we would pay Avizor a royalty on the solution and pay you direct for the tablets."

   (v) A letter from AW to SN dated 21st August 1996. This states:

   "My sincere belief is that although we compete in certain areas we can co-operate to fight our real competition, the multi-nationals."

   (vi) A letter from AW to RH and SN dated 8th January 1997. It states:

   "As we discussed we would be interested in carrying out some preliminary patient trials in addition to our laboratory/microbiological evaluations and that you would supply the product and cases. I believe the number we discussed was fifty one-month packs. The initial patient trial is planned for ten patients for a duration of four weeks/thirty days.

   Do you know when we are likely to receive the products so I can confirm the trial dates?

   You also said you could send details of your supplier and grade of hydrogen peroxide. This would in the longer term enable us to produce the appropriate hydrogen peroxide to be used in conjunction with the formulated catalase tablet in the Novoxy system.

   Any supporting microbiological data you have would be very helpful."

   (vii) A meeting between Mr Howard Griffiths ("HG") of the first defendant, AW, RH and SN on 24th March 1997 at the second defendant’s manufacturing plant in or near Madrid, Spain at which discussions and exchanges took place.

   (viii) A letter dated 1st April 1997 from AW to SN. It states:

   "1. It was good that you could meet with Howard Griffiths and that he could understand the technical details you covered. We will now move forward with Howard putting the Novoxy regime through our micro laboratories and a limited clinical study. We look forward to receiving ninety-six bottles and ninety-six tablet strips next week in order to start the tests.

   2. In conjunction with the trials we will draw up a short draft agreement between us for discussion which will cover the trading understanding between us together with the possibility of a joint development programme to achieve a longer neutralisation time."

   It also referred to the first and second defendants moving forward with a "European co-operation programme".

   (ix) A meeting between Mr Jose Romero ("JR") of the second defendant and AW on 2nd July 1997 at the second defendant’s laboratory in or near Madrid, Spain at which such discussions and exchanges took place.

   (x) A letter from AW to RH dated 8th October 1997. It states:

   "2. In addition to the tests we will conduct here, Howard’s notes are attached confirming the areas we would like to have data on."

   I do not need to trouble with particular (d). Particular (e) says that in the premises Avizor has at all material times been aware of the fact that Sauflon intended to include catalase tablets in the product in suit.

4. In The Mead Corporation v. Riverwood [1997] FSR 484, Laddie J pointed out that the court must be satisfied that there are proper grounds before it allows foreign parties to be exposed to the expense and inconvenience of joinder to proceedings in this country. The facts pleaded against the foreign party must be sufficient to give rise to a good arguable case against that party before joinder should be allowed. The present case is a case, on the face of it, of ordinary commercial supply of goods. As the Court of Appeal pointed in Unilever plc v. Chefaro Proprietaries Limited [1994] FSR 135, in order to show infringement by common design it is necessary for the plaintiff to show some act in furtherance of the common design - not merely an agreement. So the question for me is whether the claimant has pleaded a good arguable case that there are facts from which inference of some such act in furtherance of the common design could properly and clearly be drawn at trial. I have seen not only the extracts from the correspondence which are pleaded, but also the underlying correspondence. I have been unable to identify anything in this correspondence which goes beyond an ordinary commercial relationship of seller and buyer so far as the catalase tablets are concerned.
    
5. The greater part of the correspondence upon which the claimants rely came into the case as a result of a suggestion that Avizor were liable for infringement under Section 60(2) of the Patents Act 1977, an allegation which is no longer persisted in. Taking advantage of the correspondence which had been put in on this issue, the claimants chose to rely upon that correspondence in order to suggest that there was a case of joint tortfeasance. In their submissions to me, the claimants emphasised that it was far from clear that the whole of the correspondence between Avizor and Sauflon had in fact been disclosed, and that the documents presently show that there was an exchange of information relating to post-production market experience; an exchange of technical and market data; and supplies of samples for use in this litigation. So the claimants rhetorically ask, if the relationship was one merely of supplier and purchaser, why should Avizor afford these facilities to Sauflon? It seems to me that the answer is perfectly straightforward. Sauflon are purchasers from Avizor, and Avizor would be well advised both to give their purchaser as much information as they can about the market into which that purchaser is selling on, and to assist that purchaser in patent infringement actions. The submission makes it clear that the case against Avizor is speculative. I am satisfied that the particulars which I have set out above do not disclose material from which it would be possible reasonably to draw an inference that Avizor were participating in acts in furtherance of the alleged common design which are pleaded against Sauflon in the particulars of infringements which are, so far as relevant, in each case supplying the tablets. Accordingly, I formed the view at the hearing that this amendment should not be allowed and these are my reasons for that view.