7 Rolls Building
London EC4A 1NL
B e f o r e :
| SDL Hair Limited
|- and -
|(1) Next Row Limited
(2) RMG Hair Limited
(3) Unil C9 Limited
(5) Gavin Rae
And between :
|Master Distributor Limited
|- and -
|(1) SDL Hair Limited
(2) Alan Howard (Stockport) Limited
(3) Hair@Jibe Limited (t/a Jibe)
(4) Brand Performance Limited
(5) Brand Performance (UK) Limited
(6) Salons Direct Limited
(7) Next Row Limited
Ms. Anna Edwards-Stuart (instructed by Lupton Fawcett LLP) for the NRL parties
Hearing dates: 14 and 15 May 2013
Crown Copyright ©
Mr Recorder Richard Meade QC:
|MDL's title to sue||11|
|The expert witnesses||20|
|Operation of the SDL Products||36|
|Construction and infringement assessment||66|
|The communications complained of||91|
|The Alan Howard E-mail||104|
|Commercial role and status of SDL||108|
|Personal liability of Mr. Rae||124|
a. I will refer compendiously to SDL itself and all the defendants to the infringement action save the patentee, as "SDL";
b. I will refer to NRL and all parties making common cause with it, including MDL and the defendants to the Threats Action, as "NRL".
MDL's entitlement to sue
"exclusive licence" means a licence from the proprietor of or applicant for a patent conferring on the licensee, or on him and persons authorised by him, to the exclusion of all other persons (including the proprietor or applicant), any right in respect of the invention to which the patent or application relates, and "exclusive licensee" and "non-exclusive licence" shall be construed accordingly;
"[NRL] hereby grants to [MDL] an exclusive licence in relation to the Patents [which included the Patent] including the right to sell, distribute, promote, use, sub-contract the manufacture, and manufacture the Products for the Term."
The expert witnesses
|1A||An induction heating unit for inductively heating hair rollers, the unit having|
|1B||a base which is capable of resting stably on a horizontal surface,|
|1C||a well for receiving a roller,|
|1D||a coil of wire disposed around the well,|
|1E||and an electronic controller arranged to supply a varying current to the coil to inductively heat the roller|
|1F||the well is inclined relative to a horizontal surface upon which the base is supported|
|1G||sensing means arranged to monitor a roller placed in the well|
|1H||and provide a signal which enables the controller to adjust the amount of heating in accordance with the size of the roller|
Operation of the SDL Products
Construction and infringement assessment
70. Remedy for groundless threats of infringement proceedings.
(1) Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.
(4) Proceedings may not be brought under this section for
(a) a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process, or
(b) a threat, made to a person who has made or imported a product for disposal or used a process, to bring proceedings for an infringement alleged to consist of doing anything else in relation to that product or process.
(5) For the purposes of this section a person does not threaten another person with proceedings for infringement of a patent if he merely
(a) provides factual information about the patent,
(b) makes enquiries of the other person for the sole purpose of discovering whether, or by whom, the patent has been infringed as mentioned in subsection (4)(a) above, or
(c) makes an assertion about the patent for the purpose of any enquiries so made.
a. Did the communications complained of contain actionable threats? The communications were referred to as the Nielsen Letter, the Ideal Hair Letter, the Alan Howard Letter, the QVC Letter, and the Alan Howard E-Mail.
b. If the communications would otherwise contain actionable threats, is any of them saved by s. 70(5)?
c. Was Alan Howard an importer of the SDL Products (since if it was then communications to it are not actionable by virtue of s. 70(4))?
d. Is Gavin Rae liable for the sending of the Alan Howard E-Mail, given the capacity in which he sent it?
The communications complained of
a. The statement that NRL is the proprietor.
b. The provision of details of the application.
c. The statement that another company selling the Ego Boost product had been identified.
d. The reference to Ideal Hair being a distributor of the products.
e. The heading "Patent Infringement".
f. The reference to advice that the product fell within at least claim 1.
g. The reference to pre-grant rights.
h. The statement that the patent would be granted soon.
i. The request for names and addresses.
j. The heading "URGENT".
The Alan Howard E-mail
Commercial role and status of SDL
Personal liability of Mr. Rae
a. MDL is an exclusive licensee under the Patent and entitled to bring proceedings as such.
b. However, neither of the SDL Products infringes the Patent.
c. Each of the communications complained about amounts to an actionable threat under s. 70 of the Act.
d. Alan Howard is not an importer of the SDL Products and the Alan Howard E-Mail is therefore not saved by s. 70(4).
e. The Fourth Defendant in the Threats Action, Mr. Rae, is personally liable for the Alan Howard E-mail.
f. Therefore, the Threats Action succeeds and the Infringement Action fails.