July 7, 2014
Nampak Plastics Europe Ltd v Alpla UK Ltd  EWHC 2196 (Pat) (3 July 2014)
Summary judgment applications rarely succeed in patent cases because of the need for expert evidence to properly understand the scope of the claims. However, this case indicates a willingness to dispose of cases without trial where the technology can be readily understood without assistance from experts.
Nampak Plastics Europe Limited (“Nampak”) manufactures plastic milk bottles and is the proprietor of patent GB 2 494 349 (the “Patent”) for a particular design of plastic container. Nampak sued its rival, Alpla UK Limited (“Alpla”), for infringement of the Patent in respect of Alpla’s “ECO 1” product.
During the course of the infringement proceedings Alpla raised a counterclaim seeking a declaration that its new product design, the “ECO 2”, did not infringe the Patent. This High Court judgment relates to Alpla’s application for summary judgment on its counterclaim for a declaration of non-infringement.
Part 24 of the Civil Procedure Rules which governs applications for summary judgment provides that the court may give summary judgment where “the defendant has no real prospect of successfully defending the claim or issue”. The ‘no real prospect’ test was described by Hobhouse LJ in Three Rivers DC v Bank of England  UKHL 16 as “not one of probability; it is absence of reality” and it is clear from the case law that it is the Applicant that must satisfy the requisite evidential burden.
Summary judgment is seldom given in patent cases. The reason for this, as discussed by Arnold J in Starlight v Virgin  EWHC 8 (Pat), is that in order to answer questions of claim construction and infringement, not to mention obviousness, the court must adopt the mantle of the ‘person skilled in the art’ and, in many cases, will require the assistance of experts in order to do so. However, in Virgin v Delta  RPC 18 the Court of Appeal was clear that in patent cases where the technology is relatively simple “there is really no good reason why summary procedure cannot be invoked”.
In this case, Alpla’s position was that the question of whether or not the ECO 2 infringed the Patent was a question of straightforward claim construction and not one that the court would require any expert evidence to answer. As such, Alpla submitted that for practical and commercial reasons the court should give early judgment regarding the ECO 2 product.
In response, Nampak contended that the description of the ECO 2 product supplied by Alpla failed to describe the redesigned product in sufficient detail and submitted that this meant that expert evidence and possibly experiments would be necessary in order to determine whether the ECO 2 infringed or not.
Granting summary judgment in Alpla’s favour, Birss J (the “Judge”) made a declaration that the ECO 2 product did not infringe the Patent.
Although the burden fell on Alpha to establish that Nampak had no real prospect of defending the non-infringement point, the Judge held that a party that submits that a case must go to trial for the reasons outlined in Starlight must explain with some specificity what fact, expert evidence or common general knowledge is to be relied on at trial, noting that “generalities are not good enough”.
In its skeleton argument, Nampak had asserted that evidence from experts and experiments would be needed in light of what it perceived to be uncertainty in the description of the ECO 2 product provided by Alpla which was in general terms only. That point had been further developed by Nampak’s counsel in argument, who suggesting that expert evidence as to how the product would behave on a packaging line would be needed in order to determine infringement. However, the Judge characterised the submissions on this point as “entirely vague”, noting that Nampak had failed to explain why or what it was necessary to know about the behaviour of the product on the packaging line.
In response to Nampak’s alternative argument that detailed measurements of the ECO 2 product possibly requiring experiments would be necessary, the Judge commented that nothing had been put before the court to suggest that the results of such experiments would supplement what could already be seen from the drawings provided.
The Judge found that overall Nampak’s submissions that further evidence was necessary to determine non-infringement were “simply an attempt to put off a decision”. Having therefore found that the court was in a good position to decide the issue of infringement regarding the ECO 2 product, the Judge went on to consider and reject Nampak’s substantive arguments on infringement.
This judgment underlines that, although unusual, it may be possible to obtain summary judgment in patent cases where the technology is of a less sophisticated nature. To defeat summary judgment, it is not enough for a respondent to simply say ‘expert evidence will be needed’. The facts, common general knowledge and/or expert evidence that will be required for the court to determine the case must be explained with a reasonable level of specificity.
In addition to deficiencies in Nampak’s evidence and submissions, the Judge also appears to have been impressed by Alpla’s evidence of “good commercial and practical reasons why, if possible, the status of the ECO 2 should be decided”, which highlights that this will be an important area for evidence for applicants seeking summary judgment in patent cases.
Published with minor alterations in Intellectual Property Forum, Issue 98, September 2014