England and Wales Patents County Court

IN THE PATENTS COUNTY COURT

		The Rolls Building, 7 Rolls Buildings London EC4A 1NL
		06/10/2011

His Honour Judge Birss QC :

1. This judgment relates to a paper application by the defendants to adjourn the trial. This action concerns a claim by the claimant for infringement of Registered Design No 2 003 357 and unregistered design right. The designs relate to contact lens cleaning devices. The two products alleged to infringe are called the Lenscare product and the AMO product. The claimant Mr Victor Ifejika and the first defendant Mr Charles Ifejika are brothers. At the heart of the dispute is the question of who owns a design of contact lens cleaning device called the "barrel" design. This question relates to events which took place in the late 1980s.
2. The case began in the High Court on 21^st February 2008. The case came before HHJ Fysh QC sitting as a judge of the High Court in 2009 and in a judgment in October 2009 HHJ Fysh cancelled the Registered Design. Victor Ifejika appealed and his appeal was successful. The Court of Appeal reinstated the Registered Design (see the judgment of Maurice Kay, Rix and Patten LJJ [2010] EWCA Civ 563). The matter then proceeded in the High Court (Patents Court). Mr Justice Floyd transferred the matter to the Patents County Court in early 2011. The case first came before me on 10^th March 2011. On that occasion I heard Victor Ifejika and Charles Ifejika in person. Charles Ifejika represents himself and (with permission) the second defendant. I asked the parties about their estimates of the potential magnitude of damages at stake. Both Victor Ifejika and Charles Ifejika were of the view that the likely damages in relation to the Lenscare product are of the order of £35. As regards the AMO product, Charles Ifejika's position is that the likely damages (if the case against him is proven, which of course he denies) may be of the order of £25,000. Victor Ifejika's position on the AMO product is that the likely damages may be of the order of £500,000.
3. I gave directions for pleadings and for a case management conference under the new Patents County Court procedures to take place on 1^st June 2010.
4. On 1^st June 2010 a case management conference took place in the case. Again I heard Victor Ifejika and Charles Ifejika in person. In accordance with the new Patents County Court procedures, at the CMC the court will identify the issues (CPR Part 63 r63.23(1)). This has proved to be a useful part of the procedure and in many cases a list of the issues is produced at the CMC. A copy of the full order made on 1^st June 2010 is appended to this judgment.
5. It will be seen that the order contemplated that there would be statements from only three witnesses. Victor Ifejika and Charles Ifejika would provide witness statements and in addition the defendants had permission to rely on a witness statement of Ian Dryburgh. There was also provision for a witness summons in relation to Mr Dryburgh's evidence.

The paper application before me

6. Charles Ifejika now applies to adjourn the trial from its current date of 19^th October 2011 to the first open date after 7 November 2011. The basis for the application is as follows. On 12^th September Comptons (Charles Ifejika's solicitors who represent Charles Ifejika at least some of the time) received an email from Mr Dryburgh. The email states that Mr Dryburgh's father died quite suddenly a few weeks ago and he has had to cancel two holidays to provide care for his sick 87 year old mother and deal with funerals, accountants, probates and also his own design consultancy business. As a result his diary priorities have needed to change "quite drastically" and he has a series of ongoing overseas business commitments which cannot be postponed indefinitely. He continues:

"I am sorry to say that I will no longer be in the country from October 19^th through to October 26^th. I cannot be regarded as a reliable witness after quarter of a century so I'm not sure what value or credibility my presence would in reality bring to the proceedings?

Given the mitigating circumstances I find myself in, could you please postpone the hearing, or manage without my attendance?

Sorry for this unfortunate news at such a late stage but I have no alternative in view of the current situation."

7. Charles Ifejika wishes to rely on Mr Dryburgh's oral evidence at trial (despite the comment from Mr Dryburgh in the passage I have quoted above). Mr Dryburgh's statement annexes an email written in July 2007 in which he states "I cannot believe that Victor is still trying to lay claim to your invention just because he provided financial support to the project". That letter shows that Mr Dryburgh's view is and was that Victor Ifejika was providing working capital and that Victor Ifejika did not have the professional knowledge nor design skills to create a product for demonstration/production. His witness statement concludes with these two sentences:

"Whilst my recollection is that Victor was involved and wrote various letters at this stage of the project, the design was ultimately based on Charles' 'original' conceptual thinking and design direction. Charles created the concept, with Victor in support."

8. Victor Ifejika opposes the adjournment. His reasons to oppose the application are set out in a letter of 20^th September 2011. His reasons are:

i) "No more money". Victor Ifejika states that he ran out of money several years ago and cannot carry on for much longer. McDaniel (his former solicitors) have a claim against him which has been transferred to the Central London County Court (CLCC) and looms over him causing a great deal of distraction and distress. The claim is for the costs of the hearing before HHJ Fysh in 2009, the outcome of which was overturned on appeal. Victor Ifejika states that the costs order he obtained in the Court of Appeal has been adjourned until the conclusion of these proceedings. At a hearing relating to McDaniels' claim on 15^th August 2011 Victor Ifejika informed District Judge Gilchrist at CLCC that the trial of this action had been set for 19^th October 2011. DJ Gilchrist transferred the case to CLCC's Chancery list and Victor Ifejika states that this "effectively stayed McDaniel's claim until my claim against Charles was tried on 19^th-20^th October". He states that he cannot afford for these proceedings to be delayed any longer unless Charles is willing to pay the whole of McDaniel's claim and their costs.

ii) "Ian Dryburgh's evidence is irrelevant". Victor Ifejika submits that his primary evidence establishes his ownership of the barrel design. This primary evidence consists of two documents at pages 122 and 158 of his bundle of documents. These are letters dating from 1988 and 1992 respectively by Mr Silverman of the patent attorneys Haseltine Lake. The 1988 letter is to Charles Ifejika and the 1992 letter is to Victor Ifejika. Victor Ifejika contends that the 1988 letter shows that Mr Silverman amended a patent specification of Charles Ifejika's at that time to include wording referring to the "barrel" case designed by Victor Ifejika (and that Victor Ifejika paid for those amendments). Victor Ifejika contends that the 1992 letter shows that Mr Silverman acknowledges Victor Ifejika's responsibility for the subject matter and claims, i.e. what Victor Ifejika contends is Victor Ifejika's "barrel" case design. Victor Ifejika also contends that Mr Silverman is more skilled in matters of intellectual property law than Mr Dryburgh and that he (Mr Silverman) saw all the protoypes in issue. These are the reasons why Victor Ifejika contends that Mr Dryburgh's evidence is irrelevant.

9. On 28^th September 2011 the papers came before me and I directed that the defendants should have a short opportunity to reply to the submissions of Victor Ifejika and I would decide the matter on paper today (6^th October 2011).
10. In reply submissions on behalf of the defendants, Comptons state that the evidence of Ian Dryburgh is very important to the defendants given his direct involvement in the matters in issue. They point out that it is clear the claimant does not accept the evidence of Ian Dryburgh and so it is essential he be available to attend court and be cross-examined. They ask that if the trial is to go ahead on 19th October then they wish to rely on Mr Dryburgh's statement in any event.
11. Comptons then take a point that the contentions of Victor Ifejika about Mr Silverman are inconsistent with a judgment of the Comptroller's hearing officer (Peter Back) in an entitlement case between the same parties (ref BL 0/260/06).
12. Finally Comptons state that the defendants have incurred very substantial legal costs defending the claimant's action. They contend that the claimant is the instigator of the proceedings and the defendants are reluctant parties to an action which has been going on since 2008. They contend that the claimant cannot rely on his own unanticipated financial circumstances in such prolonged proceedings to deny the defendants a short adjournment to exercise their right to call their witness evidence in defence of the claim.
13. They end by asking that the case be relisted for the first open date after 14^th November (a few days later than the period sought hitherto).

Decision

14. First it seems to me that the issue about whether or not Victor Ifejika's argument about Mr Silverman is or is not inconsistent with a decision of the Comptroller's Hearing Officer is not something I can resolve on this application.
15. Victor Ifejika contends that Mr Dryburgh's evidence is irrelevant and I also note that Mr Dryburgh himself is clearly concerned about his ability to give evidence dealing with matters a quarter of a century ago. On the face of it Mr Dryburgh's evidence is supportive of the defendants' case and antagonistic to the claimant's case. Of course Victor Ifejika does not accept what Mr Dryburgh says. The purpose of the trial will be to resolve the issue. Cross-examination of witnesses would usually be an important part of that process.
16. So subject to Victor Ifejika's very serious financial difficulties, it seems to me that it would normally be appropriate to make the order sought by the defendants. The case is presently listed for two days on 19th and 20^th October. The earliest adjourned date on which the court could accommodate a two day trial would be on 19^th/20^th December 2011.
17. However Victor Ifejika urges me not to adjourn the case. He contends that he cannot afford for these proceedings to be delayed any longer. At the conclusion of his letter Victor Ifejika writes "I have spent a great deal of money in trying to bring Charles to justice, and am penniless and completely vulnerable. I have also given the court more than enough evidence with which to convict Charles. Please do no allow him [Charles] to drag these proceedings out any longer, he is a deceptively clever and determined individual who must not be underestimated."
18. The overriding objective is to the deal with cases justly (CPR Part 1 r 1.1). This includes ensuring the parties are on an equal footing, saving expense, and dealing with the case in ways which are proportionate to the amount of money involved, the importance of the case, the complexity of the issues and the financial position of each party. It also includes ensuring that the case is dealt with expeditiously and fairly and allotting an appropriate share of the courts' resources.
19. There is a risk of injustice in either course I am urged to adopt. If I adjourn the case Victor Ifejika is very concerned that he will simply be denied justice altogether. He says he cannot afford to go on a day longer than 19^th/20^th October. Plainly if I refuse to adjourn the case then Charles Ifejika should be permitted to rely on the witness statement of Ian Dryburgh. However if I refuse the adjournment then that statement will be untested in cross-examination. The weight given to that evidence at trial will inevitably be less than it might have been had Mr Dryburgh attended court and credibly maintained his evidence in cross-examination. Mr Dryburgh is the only potentially independent witness who might attend trial.
20. Balancing these risks is not easy. In the end it seems to me that the lesser risk of injustice is associated with refusing the adjournment. That way at least the parties are assured that they will both be able to attend trial and resolve the dispute. This case has gone on long enough. For it to be adjourned for two months may not seem a long time given that it started in 2008 but if that adjournment meant that no trial took place at all then that would be very unfair indeed to Victor Ifejika. I bear in mind that Victor Ifejika's protestations that he could not afford for the case to continue may not be right but having heard two applications in this matter already, it is clear to me that this case is crying out to be brought to a conclusion. Although the evidence will be potentially of a lesser quality from the defendants' point of view, I bear in mind that they will obviously be entitled to explain why Mr Dryburgh is unavailable to attend trial. I also bear in mind that issues of entitlement of the kind to which Mr Dryburgh's evidence relates are generally resolved more by reference to what can be discerned from the contemporaneous documents themselves than from the recollection of individuals going back a quarter of a century.
21. The application to adjourn the trial will be refused.
22. Costs reserved (see CPR Pt 63 r 63.26(1)).

Annex 1

Operative parts of the order of 1^st June 2011

IT IS ORDERED THAT:

23. The issues are identified as follows:-

a. The action consists of a claim relating to Registered Design No 2 003 357 and a claim relating to UK unregistered design rights said to subsist in the Hot House Prototype and the manufacturing drawings for the Hot House Prototype.

b. In relation to the Registered Design:

i. There is no issue of novelty of the Registered Design.

ii. The claimant's right to the Registered Design is in issue and will be decided at trial.

iii. There is no issue as to whether the Lenscare device is an article in respect of which the Registered Design is registered and to which that design or a design not substantially different from it has been applied. The Lenscare device is such an article. Thus if the claimant's title to the Registered Design is established, the Lenscare device is an infringement.

iv. Whether the AMO device is an article to which the Registered Design (or a design not substantially different from it) has been applied is in issue and will be decided at trial.

v. If the Lenscare device is found to infringe the Registered Design, damages for that will be assessed at the trial.

vi. If the AMO device is found to infringe, damages will be assessed at an enquiry as to damages to be conducted later. The defendants' case that they were not aware and had no reasonable grounds for supposing that the design was registered will be dealt with if necessary on that enquiry.

c. In relation to unregistered design right:

i. The subsistence of the unregistered design rights, relating to the originality of the design(s) and the term of the right(s), are in issue and will be decided at trial.

ii. There is no issue as to the claimant's right to the unregistered design rights claimed (if they subsist).

iii. Whether the Lenscare device and the AMO device are articles made to the relevant design is in issue and will be decided at trial.

iv. If the Lenscare device is found to infringe unregistered design right, damages for that will be assessed at the trial.

v. If the AMO device is found to infringe, damages will be assessed at an enquiry as to damages to be conducted later.

d. The authenticity of the document headed "The CLC 60" at p33 of the annexes to the Reply is not in issue.

24. The claimant will provide to the defendants a copy of the bundle provided to the court for the 10^th March 2011 hearing.
25. The parties have permission to rely at trial on the statements of case in the state these documents are in at the date of this hearing, the bundles of documents annexed thereto including the bundle annexed to the Reply, and the bundle provided to the court for the 10^th March 2011 hearing.
26. The claimant has permission to rely on physical exhibits, including the Murdoch prototype, the Hot House prototype, the Lenscare device, the AMO device, no more than 5 examples of contact lens cover devices on the market before the registered design, and the claimant's model of the Coopers & Lybrand prototype.
27. Before 13^th July 2011 the claimant will allow the defendants to inspect all the physical exhibits the claimant intends to bring to trial, including any cleaner parts. The inspection will take place at the offices of the defendants' solicitors on a date to be agreed between the parties.
28. The claimant and the first defendant may each make, file and serve a signed witness statement of their own evidence, the evidence to relate to the issues identified above as being issues to be decided at trial.
29. The claimant and the defendants may file any further documents on which they intend to rely by exhibiting the documents to the witness statement referred to in paragraph 6 of this order. The further documents will include:

a. From the claimant:

i. Photographs of the physical exhibits relied on and the parts thereof.

ii. Representations of the no more than 5 examples of contact lens cover devices on the market before the registered design on which he intends to rely.

iii. Representation of the Cleansatron contact lens cleaning device.

iv. The Hot House manufacturing drawings.

v. The newspaper article relied on at this hearing.

b. From the defendants:

i. The secrecy agreement

ii. The original engineering drawings referred to at this hearing.

iii. The Pole de Plasturgy and CT Plastics/Tony Malcolm drawings.

iv. Representations of no more than 5 further examples of contact lens cover devices on the market before the registered design (if the defendants wish to rely on any further examples over and above the examples relied on by the claimant)

30. The witness statements of the claimant and the first defendant will be filed at court and served on the other party on or before 27^th July 2011.
31. The defendants have permission to make a paper application for a witness summons in relation to Ian Dryburgh (if so advised).
32. The defendants may make, file and serve a signed witness statement of Ian Dryburgh dealing with evidence of fact relating to the issues identified above as being issues to be decided at trial. That witness statement will be filed at court and served on the claimant on or before 10^th August 2011.
33. The parties may cross-examine each other's witnesses at the trial on the issues identified above as being issues to be decided at trial.
34. The trial of this action will take place on 19^th October 2011 for no more than two days. Skeleton arguments will be filed at court and exchanged between the parties on 12^th October 2011.
35. Neither party has permission to call any expert evidence.
36. Neither party has permission to call evidence relating to any issue other than the issues identified above as being issues to be decided at trial.
37. Neither party has permission to call any witnesses other than the three identified above.
38. No order for disclosure of documents be made.
39. Costs reserved