Facts

In patent proceedings involving validity and infringement due to be heard in July 2022, the claimant, Shenzhen Carku Technology Ltd, alleged that threats had been made by the defendant patentee, The NOCO Company. Carku said that NOCO had written to Amazon UK complaining of sales and offers to sell car jump starters on its website under various distributor brands, which led to Amazon removing the products from sale on amazon.co.uk. NOCO told Amazon that it considered that Carku’s products infringed its patent.

NOCO denied that its communication to Amazon amounted to a direct threat. However, there was no dispute that NOCO had foreseen that Amazon would pass on the gist of the complaint to Carku’s distributors, which it did. This led Carku to apply to the court to be allowed to advance a case of “indirect threats” on that basis. Originally, Carku put forward a pleading explicitly running this indirect threat allegation. NOCO objected to it, and Carku retreated to the position that it did not need to make the amendment in any event, because indirect threats were already comprehended in the existing pleading. The question was whether Carku needed to make an amendment or whether indirect threats had already been pleaded.

Decision

NOCO argued that if the indirect threats allegation was not comprehended within the existing pleading, for Carku to raise it, there had to be an amendment, which was late and should be refused. NOCO said that such a late amendment would prejudice it and that deferring the matter to a threats inquiry (if such an inquiry was necessary, i.e., if the patent was found to be invalid and/or there was no infringement) was not an answer to a late amendment.

Considering the Particulars of Claim, Mr Justice Meade found that Carku’s pleading, as it stood, was not completely clear about its scope. However, in its Defence pleading, NOCO had admitted that, as well as complaining to Amazon, it had written directly to Ring, one of the distributors. This, together with NOCO’s approach to a request for further information from Carku and a witness statement that NOCO relied on, showed that NOCO certainly understood that the question of threats would involve some real investigation, at least of the impact on the distributors of NOCO writing to Amazon.

Carku’s Particulars of Claim did not explicitly set out what was meant by indirect threats. However, it went beyond alleging threats solely in relation to NOCO writing to Amazon, as it referred also to NOCO writing to Carku’s distributors. Overall, in Meade J’s view, the pleading was imperfect, but was not understood or could not reasonably have been understood by NOCO to be limited simply to what it had said to Amazon.

Meade J said that it would not be difficult to get an adequate determination of the question of indirect threats at trial, even at this late stage before trial: it was not disputed what was said to Amazon, nor was it disputed that it was foreseeable that Amazon would pass it on to the distributors. It was also accepted that interpretation of what was said was an objective matter and that subjective evidence from Amazon or the distributors was unnecessary.

Meade J rejected NOCO’s argument that there was insufficient time before trial to assess whether the distributors were importers, which might provide a defence even if the threats allegation was otherwise successful. In Meade J’s view, it would not be necessary to look at every distributor, but only at a sample distributor. This was not an onerous task and, although it could not be wholly excluded that it might require more than Carku simply choosing a distributor and presenting evidence, such as an invoice or bill of sale, to establish who was the owner of the products at the time of importation, it was very unlikely. In any event, the pleadings stated that Carku was the importer.

Meade J concluded that even if the indirect threats issue was completely new, which he did not think it was, it could quite readily be accommodated in the July trial. However, that did not mean that the matter should be included in the trial. In Meade J’s view, the trial in July should focus on what was already in issue and what was important, which was validity, infringement and the direct communication to Amazon. Resolution of those issues would advance the case towards an overall conclusion, he said.

Accordingly, Meade J directed that the indirect threats aspect of the case, which were already comprehended in the Particulars of Claim, albeit imperfectly, should be tried with any inquiry as to threats or at such other time as the court might direct following judgment on the July trial. (Shenzhen Carku Technology Co Ltd v The NOCO Company [2022] EWHC 1255 (Pat) (24 May 2022) — to read the judgment in full, click here).