England and Wales High Court (Patents Court) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

		Royal Courts of Justice Strand. London. WC2A 2LL
		5 December 2007

MR. JUSTICE FLOYD:

1. This is the first case management conference in an action brought by Dyson Technology Limited (to whom I shall refer as "Dyson") against Samsung Gwangju Electronics Company Limited (to whom I shall refer as "Samsung") and which is brought to revoke two patents owned by Samsung. The patents in suit are numbers 2,424,603 and 2,424,606, both of which were granted in the early part of this year, the first on 21st February 2007 and the second on 14th March. The technology with which the two patents are concerned is vacuum cleaners and vacuum cleaners which operate by using a cyclonic principle.
2. I have been taken to the claims and the figures of the patents in outline and it is not necessary to recite those here, save to say that it does not appear to me that this case raises or is likely to raise issues of enormous complexity. On the scale of complexity of 1 to 5, which is used in this court to determine level of complexity, I consider this to be a case of 2 to 3.
3. The issues which arise on the CMC arise in this way. The claim form was issued and served on 11th September 2007 and, following two extensions of time, Samsung served its defence on 31st October 2007. The issues which are raised are the conventional ones of anticipation and obviousness. One in particular needs to be noted, that is an allegation of prior use made by Dyson in respect of vacuum cleaners sold and supplied to retailers for onward sale to members of the public in the United Kingdom by Dyson Limited, which is a related company of Dyson as follows:

"(i) model number DC07 between around June 2001 and to at least 29 March 2005; and

(ii) model number DC08 between around April 2002 and to at least 29 March 2005."

The pleading continues:

"Vacuum cleaners dating from 29 March 2005 and which are in all material respects identical to the DC07 and DC08 vacuum cleaners sold and supplied as aforesaid may be inspected upon reasonable notice."

4. Samsung are entitled to know the case which is put against them and paragraph 11.4 of the practice direction accompanying Part 63 of the CPR sets out in detail the matters which must be pleaded in support of such an allegation:

"11.4 ...

(2) in the case of matter or a design made available to the public by use –

(a) the date or dates of such use;

(b) the name of all persons making such use;

(c) any written material which identifies such use;

(d) the existence and location of any apparatus employed in such use; and

(e) all facts and matters relied on to establish that such matter was made available to the public."

5. Following the service of that pleading the matter was taken up in correspondence with a letter from Withers & Rogers who are European and Chartered Patent Attorneys who are acting on behalf of Samsung dated 27th September 2007 saying in paragraph 2 "we should like to arrange to inspect the alleged DC07 and DC08 pieces of prior art next week".
6. On 1st October solicitors acting on behalf Dyson wrote saying:

"Having discussed the position with our clients, and given that you have confirmed that you have already obtained samples of the DC 07 and DC 08 machines, we believe that the better course would be for us to provide to you detailed cross-sectional design drawings of the cyclone packs for the machines in question. The drawings are dated, and pre-date the priority date of the patent. They differ from the products currently on the market only in relation to minor and unimportant details relating to the vortex finder in the downstream cyclones. Provision of these drawings will allow more detailed consideration of our client's products. The drawings are proprietary to our clients and consequently we will require assurances that they will not be copied and that they will be seen only by your firm, counsel instructed, and a pre-identified representative of your client. They must not leave your possession custody or control and must not be reproduced, in part or in whole, on any other medium. They must be returned to our clients at the end of the case."

The reason why Dyson propose this alternative course is that although they have examples of the DC07 and DC08 as sold they have explained that and they do not wish those machines to be dismantled or destroyed as they form part of a permanent record of the machines which they have placed on the market and are, to that extent, unique.

7. The offer of drawings was also supplemented by an offer of cutaway photographs of the cyclone portions of the relevant machines. Wragge & Co. wrote again on 5th October 2007 saying:

"You are correct that the drawings themselves are not prior art. Rather, they were offered by our client to assist you in identifying the immaterial differences between the samples of the DC07 and DC08 machines that you have purchased and the machines as made available to the public before the priority date.

Although our client trusts that you and your client will take good care of the drawings, it is against our client's policy to disclose such documents without obtaining sufficient assurances as to how they will be dealt with. Its concern is heightened by the fact that your client is a direct competitor of Dyson.

By obtaining samples of the DC07 and DC08, you have obtained, in all material respects, copies of the prior art. If you and your client would like the additional assistance of the drawings that our client has offered, then please provide us with the assurance sought in our letter ..."

8. On 11th October Withers & Rogers replied saying they were still considering the offer of the drawings but accepted the offer of the vertical cutaway sections of the current machine cyclone packs.
9. The matter then proceeded to the service of the defence and the exchange of draft orders for directions but the parties are at odds as to the timetable in this particular respect. Dyson say that the pleading, coupled with the provision of the cyclone packs, the availability of the modern machines and the offer of the drawings is ample to inform the defendants of the case of prior use which they have to meet.
10. The defendants say, through Mr. Davis who appears on their behalf, that this is not adequate and, moreover, not the right way to proceed. He says that the proper way to proceed in these circumstances is for Dyson to produce a proper product description identifying the relevant features of the prior use for use at the trial and which would be open and available for use by his client without restrictions as to confidentiality. He says that the obligations of confidentiality which have been requested are unreasonable and will place his clients under restrictions which are not only unreasonable but unnecessary as well. The restrictions which have been requested are of course only those which are requested initially. Solicitors on behalf of Dyson have indicated that they will be prepared to consider an extension of those persons who Dyson are prepared to have access to the confidential drawings if Samsung were to make a reasoned request.
11. This is not an unfamiliar situation in this type of litigation. The right course, it seems to me, is and would have been for Samsung to have accepted the offer of the drawings and to make clear what it was that it wished to do with the drawings that the confidentiality restrictions prevented them from doing. If Dyson were or are in the future unreasonable as to what is done and can be done with the drawings that are provided then they do so at their peril in costs.
12. It seems to me that what I have to consider first of all is whether the pleading of prior use in these circumstances is adequate to allow the case to proceed or whether I should, as requested by the defendants, order a special process description to be prepared. Now, I am perfectly prepared to accept that in some circumstances a product or process description would be a much more desirable way of proceeding with an allegation of prior use for the efficient determination of the issue at trial. However, procedural directions need to take account of the nature of the case with which the court is concerned.
13. In this case is seems to me that the essential features of the Dyson prior used machines are likely to be ascertainable from various materials which have been offered and will be available to be inspected by those who need to know. In those circumstances it seems to me that a product description in this particular case will only serve to increase costs and will not be of advantage to the judge who tries the case. It follows, therefore, that I would propose that the case proceeded, at least in this respect, in the manner suggested by Dyson.
14. The next issue which arises concerns the possibility of an amendment. Samsung indicated at an early stage that it was their intention to apply to amend. On 14th November Withers & Rogers wrote to Wragge & Co. for Dyson stating:

"Our client is considering an amendment of the patents".

Then having referred to prospective changes in the law they state:

"... our client intends to wait until after the coming into force of the EPC 2000, and the corresponding amendments to the Patents Act 1977, before instigating any application to amend."

15. Samsung did not then and still have not indicated to Dyson any detail of what the proposed amendment was to be. However, on 19th November they wrote saying:

"We have already informed you of our client's intention to apply to amend its patents ..." [and said that in their directions they had proposed a direction concerning amendment which took account of the prospective changes in the law.]

16. The letter continued:

"If, despite this notice, your client instructs you to continue to prepare its case on the basis of the patents as granted, even though such preparations will most likely be rendered pointless by the amendment, then that is a matter for your client. We see no reason why our client should be held liable for your client's costs in such a case."

17. On 30th November Withers & Rogers again wrote stating:

"At the present time, our client has the firm intention of applying to amend. However, our client intends to wait...".

18. Then the letter said this:

"The reason for this is that it increases legal certainty for all parties in respect of the amendment application, and thereby reduces costs. As a consequence, whereas our client has the intention to apply to amend at this time, the actual amendment itself has not been formulated."

19. In his skeleton argument for this hearing Mr. Davis says that he accepts that if the defendant is going to amend its patent it ought to do so in a timely manner or potentially face the costs consequences.
20. Now, where a party proposes amendments in the course of a revocation action he has to decide whether that amendment is put forward whilst abandoning the validity of the unamended claims or whether he wishes to ride both horses and say that the amendments merely strengthened the validity of the unamended claims.
21. Samsung have not yet decided what amendment they wish to make and they have not yet decided whether the amendment that they put forward, if they put one forward at all, will be on the former basis or the latter. It seems to me that in these circumstances it is quite incorrect to say that Dyson would be wasting its time if it continued to prepare its case on the basis of the unamended claims. What is proposed by Samsung is an order that the defendant shall inform the claimant of any intention to amend its patents and shall instigate any application to amend either or both of the patents by 4th February 2008 and the directions that are to be given in the proceedings should follow on from the notice of opposition to those amendments formerly applied for in proper succession.
22. It seems to me that the right way to proceed in this case is as proposed by Dyson. There is no application to amend the patents before me, nor is there any guarantee that there will be one. Finally, there is no guarantee that if there is one it will be one which disposes of the issue of validity of the unamended claims. In those circumstances it seems to me that it would be procedurally risky and I go so far as to say wrong to delay the case while Samsung decides on what basis it wishes to defend the action. It seems to me that that point is particularly brought out by the fact that the order proposed by Samsung would not debar them from making further amendments even after the date of 14th February proposed in their order. It is very rare for the court ever to shut out a party procedurally by a prescriptive order in advance without knowing precisely what the nature of the further amendment might be.
23. In those circumstances it seems to me the right way to proceed is to proceed with what I might call a normal order for directions. Nothing in what I have said would foreclose Samsung from making an application to amend should it decide to do so and obviously it takes the risk that the longer it leaves it, having indicated that it has it in mind, the greater difficulties it may face in allowing the amendment to be brought forward in the context of the present case.
24. In those circumstances, subject to any questions of detail, I propose to make the order in the form proposed by Dyson.