The Patent Review 2013 - 2014: Summary Judgment on Infringement: Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293, Court of Appeal

15 April 2015

Neil Jenkins, Audrey Horton

This was a relatively unusual case where summary judgment was granted to the claimant (putative infringer) in a patent action for a declaration of non-infringement.

The Nampak patent related to plastic milk bottles. Nampak had alleged that Alpla’s bottle called the ECO 1 infringed the patent. Alpla denied infringement and contended that the patent was invalid. Alpla also produced a design called the ECO 2 (a modification of ECO 1) which it argued did not infringe the patent. Alpla brought a claim for a declaration of non-infringement (DNI) under Section 71 of the 1977 Patents Act in respect of the ECO 2 product and at the same time applied for summary judgment on that claim.

Summary judgment, a procedure by which all or part of a case can be disposed of without a trial where a claim or a defence to a claim has no real prospect of success, seldom succeeds in patent infringement actions. This is because in order to determine infringement, the Court needs to construe the claim and for that purpose, it needs to adopt the mantle of the person skilled in the art for which it normally needs expert evidence on the common general knowledge and the skilled person's understanding of the words in the claims at issue.

At first instance, the Judge held that the technology in this case was sufficiently simple for there to be no need to call expert evidence: the patent claims did not use terms of art and so the judge could proceed to construe the claims without any expert evidence. The Judge said that a patentee could not resist an application for summary judgment simply by advancing unspecific assertions about the need for expert evidence: he or she needed to explain with at least some specificity what fact or what expert evidence or what common general knowledge is to be relied on. Generalities were not good enough. Further, the shape of the ECO 2 product could readily be understood and nothing had been put before the court to explain how the outcome of any infringement analysis would depend on the results of detailed measurement experiments as proposed to be conducted by the patentee. Therefore there was no need to prolong the commercial uncertainty by waiting for a trial. Accordingly, the Judge held that the ECO 2 product as depicted in the application for the DNI did not infringe and granted summary judgment.

The Court of Appeal upheld the decision of Mr Justice Birss. The Court of Appeal commented that it was not a complicated case and that the warnings in the authorities about the dangers of summary judgment in patent cases did not therefore apply with such force. Like the first instance judge, the Court of Appeal felt able to draw the necessary conclusions about the construction of the claim on the basis of the specification of the patent and was unable to see how these, or the conclusion relating to infringement, could be shown to be erroneous by subsequent evidence. It was for Nampak to have shown that there was at least some basis for supposing the contrary to be the case but it had failed to do so.