![]() |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] [DONATE] | |||||||||
Intellectual Property Enterprise Court |
||||||||||
PLEASE SUPPORT BAILII & FREE ACCESS TO LAW
To maintain its current level of service, BAILII urgently needs the support of its users.
Since you use the site, please consider making a donation to celebrate BAILII's 25 years of providing free access to law. No contribution is too small. If every visitor this month gives just £5, it will have a significant impact on BAILII's ability to continue providing this vital service.
Thank you for your support! | ||||||||||
You are here: BAILII >> Databases >> Intellectual Property Enterprise Court >> AP Racing Ltd v Alcon Components Ltd [2015] EWHC 1371 (IPEC) (15 May 2015) URL: https://www.bailii.org/ew/cases/EWHC/IPEC/2015/1371.html Cite as: [2015] EWHC 1371 (IPEC) |
[New search] [View without highlighting] [Printable RTF version] [Help]
CHANCERY DIVISION
INTELLECTUAL PROPERTY ENTERPRISE COURT
Fetter Lane, London, EC4A 1NL |
||
B e f o r e :
____________________
AP RACING LIMITED |
Claimant |
|
- and - |
||
ALCON COMPONENTS LIMITED |
Defendant |
____________________
Douglas Campbell (instructed by Withers & Rogers) for the Defendant
Hearing dates: 5 May 2015
____________________
Crown Copyright ©
Judge Hacon :
Introduction
Procedural background
The law
The law on Henderson v Henderson and abuse of process
"But Henderson v Henderson abuse of process, as now understood, although separate and distinct from cause of action estoppel and issue estoppel, has much in common with them. The underlying public interest is the same: that there should be finality in litigation and that a party should not be twice vexed in the same matter. This public interest is reinforced by the current emphasis on efficiency and economy in the conduct of litigation, in the interests of the parties and the public as a whole. The bringing of a claim or the raising of a defence in later proceedings may, without more, amount to abuse if the court is satisfied (the onus being on the party alleging abuse) that the claim or defence should have been raised in the earlier proceedings if it was to be raised at all. I would not accept that it is necessary, before abuse may be found, to identify any additional element such as a collateral attack on a previous decision or some dishonesty, but where those elements are present the later proceedings will be much more obviously abusive, and there will rarely be a finding of abuse unless the later proceeding involves what the court regards as unjust harassment of a party. It is, however, wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive. That is to adopt too dogmatic an approach to what should in my opinion be a broad, merits-based judgment which takes account of the public and private interests involved and also takes account of all the facts of the case, focusing attention on the crucial question whether, in all the circumstances, a party is misusing or abusing the process of the court by seeking to raise before it the issue which could have been raised before. As one cannot comprehensively list all possible forms of abuse, so one cannot formulate any hard and fast rule to determine whether, on given facts, abuse is to be found or not. Thus while I would accept that lack of funds would not ordinarily excuse a failure to raise in earlier proceedings an issue which could and should have been raised then, I would not regard it as necessarily irrelevant, particularly if it appears that the lack of funds has been caused by the party against whom it is sought to claim. While the result may often be the same, it is in my view preferable to ask whether in all the circumstances a party's conduct is an abuse than to ask whether the conduct is an abuse and then, if it is, to ask whether the abuse is excused or justified by special circumstances. Properly applied, and whatever the legitimacy of its descent, the rule has in my view a valuable part to play in protecting the interests of justice."
"It is one thing to refuse to allow a party to relitigate a question which has already been decided; it is quite another to deny him the opportunity of litigating for the first time a question which has not previously been adjudicated upon. This latter (though not the former) is prima facie a denial of the citizen's right of access to the court conferred by the common law and guaranteed by article 6 of the Convention for the Protection of Human Rights and Fundamental Freedoms. While, therefore, the doctrine of res judicata in all its branches may properly be regarded as a rule of substantive law, applicable in all save exceptional circumstances, the doctrine now under consideration can be no more than a procedural rule based on the need to protect the process of the court from abuse and the defendant from oppression. In Brisbane City Council v Attorney General for Queensland [1979] AC 411, 425 Lord Wilberforce, giving the advice of the Judicial Committee of the Privy Council, explained that the true basis of the rule in Henderson v Henderson 3 Hare 100 is abuse of process and observed that it 'ought only to be applied when the facts are such as to amount to an abuse: otherwise there is a danger of a party being shut out from bringing forward a genuine subject of litigation'. There is, therefore, only one question to be considered in the present case: whether it was oppressive or otherwise an abuse of the process of the court for Mr Johnson to bring his own proceedings against the firm when he could have brought them as part of or at the same time as the company's action. This question must be determined as at the time when Mr Johnson brought the present proceedings and in the light of everything that had then happened. There is, of course, no doubt that Mr Johnson could have brought his action as part of or at the same time as the company's action. But it does not at all follow that he should have done so or that his failure to do so renders the present action oppressive to the firm or an abuse of the process of the court. As May LJ observed in Manson v Vooght [1999] BPIR 376, 387, it may in a particular case be sensible to advance claims separately. In so far as the so-called rule in Henderson v Henderson suggests that there is a presumption against the bringing of successive actions, I consider that it is a distortion of the true position. The burden should always rest upon the defendant to establish that it is oppressive or an abuse of process for him to be subjected to the second action."
"[49] The principles to be derived from the authorities, of which by far the most important is Johnson v Gore Wood & Co [2002] 2 AC 1, can be summarised as follows:
i) Where A has brought an action against B, a later action against B or C may be struck out where the second action is an abuse of process.
ii) A later action against B is much more likely to be held to be an abuse of process than a later action against C.
iii) The burden of establishing abuse of process is on B or C or as the case may be.
iv) It is wrong to hold that because a matter could have been raised in earlier proceedings it should have been, so as to render the raising of it in later proceedings necessarily abusive.
v) The question in every case is whether, applying a broad merits based approach, A's conduct is in all the circumstances an abuse of process.
vi) The court will rarely find that the later action is an abuse of process unless the later action involves unjust harassment or oppression of B or C."
"Failure to use reasonable diligence
[59] As for the relevance of a claimant's failure to use what the court might consider to be reasonable diligence in finding out facts relevant to whether he has a possible claim, it may be that this could possibly be relevant to the inquiry described by Lord Bingham, depending on the circumstances. On the other hand, it does not seem to me that there can be a general principle that a potential claimant is under a duty to exercise reasonable diligence, not yet having brought proceedings asserting a particular claim, to find out the facts relevant to whether he has or may have such a claim. Moreover, I do not see how it can be relevant at all that the claimant may have failed to use due diligence in attending to his own interests at the time of the transaction or the events giving rise to the claims asserted. Unless, on the merits, that is a complete and inevitable defence to the claim, it seems to me to be entirely irrelevant to the inquiry which is necessary under Johnson v Gore Wood & Co [2002] 2 AC 1. Nothing in Wigram V-C's observations in Henderson v Henderson 3 Hare 100 supports that. That, however, is the context of the master's comments on lack of reasonable diligence. If relevant at all, an inquiry as to any suggested lack of diligence on the part of the claimant would have to involve considering the circumstances of the particular claimant, including what knowledge he did have of the facts at any relevant stage, in order to decide whether he knew enough to put him on inquiry so as to try to find out more. In this context, as generally, it is also relevant that the onus is always on the defendant to show that the claimant's conduct is an abuse of process."
"[61] In Johnson v Gore Wood & Co [2002] 2 AC 1 the defendant knew that Mr Johnson was contemplating bringing his own proceedings at the time when the first proceedings, brought by Mr Johnson's wholly-owned company, were compromised. Mr Johnson was a party to the compromise agreement and the terms of that agreement affected expressly the separate claim by Mr Johnson in various ways. Those facts were undoubtedly relevant to the decision on the facts that it was not an abuse of the process for Mr Johnson to bring separate proceedings, even though they were for an identical cause of action, and involved virtually the same evidence: see Lord Bingham, at pp 33h-34g. Logically, therefore, it must be potentially relevant that a claimant knows about another claim, is contemplating asserting it against the same defendant, but says nothing about it. That is borne out further by a passage in Lord Millett's speech in the same case, at p 61:
'Given that Mr Johnson was entitled to defer the bringing of his own proceedings until after the company's claims had been resolved, it would have been unconscionable for him to have stood by without disclosing his intentions and knowingly allowed the firm to settle the company's action in the belief that it was dealing finally with all liability arising from its alleged negligence in the exercise of the option. To bring his own claim in those circumstances would, in my opinion, amount to an abuse of the process of the court.'
Lord Millett was alone in making that comment, but its force, in the context of that case, is evident."
Thus, knowledge on the part of the claimant that he has a further cause of action, his deliberate concealment of it from the defendant and then a settlement of the first action such that the defendant expects his dispute with the claimant to have been resolved in full, would together constitute an abuse.
"It is not right, in my view, to say, as a general proposition of law, that where the claimant in existing proceedings comes to know, in the course of those proceedings, from information provided by the defendant, of an additional cause of action against the defendant, which is quite different from that asserted in his existing claim and one which it would not be reasonable, in the circumstances, to expect him to seek to combine with that existing claim, he must inform the defendant of the fact that he is contemplating bringing such a claim in future before he brings his existing proceedings to trial. Different facts might lead to a different conclusion. For example, it might be different if the information came from another source, so that the parties' knowledge of the facts was not the same. It might well be different if the claims were essentially similar (as in Johnson v Gore Wood & Co [2002] 2 AC 1) or closely related (as in the Aldi Stores Ltd case [2008] 1 WLR 748) so that they could readily have been combined. It might perhaps be different if the information had come to the claimant's knowledge at a much earlier stage than occurred here."
"[96] For my part, I do not think that parties should keep future claims secret merely because a second claim might involve other issues. The proper course is for parties to put their cards on the table so that no one is taken by surprise and the appropriate course in case management terms can be considered by the judge. In particular parties should not keep quiet in the hope of improving their position in respect of a claim arising out of similar facts or evidence in the future. Nor should they do so simply because a second claim may involve other complex issues. On the contrary they should come clean so that the court can decide whether one or more trials is required and when. The time for such a decision to be taken is before there is a trial of any of the issues. In this way the underlying approach of the CPR, namely that of co-operation between the parties, robust case management and disposing of cases, including particular issues, justly can be forwarded and not frustrated."
Patent practice: further claims of infringement at the inquiry or account
"[49] Now it is true that in an inquiry as to damages or account of profits the patentee is allowed to claim relief for types of alleged infringement not ruled on by the trial court. This saves the formal issuance of fresh proceedings in respect of these and is permitted as a matter of convenience, see General Tire and Rubber Co v Firestone Tyre and Rubber Co Ltd [1975] R.P.C. 203, at 207. And of course if, in the inquiry or account, the patentee alleges a type of infringement not considered by the trial court, the court conducting the inquiry or account will have to rule on whether it falls within the scope of the patent."
The main ruling in Unilin was overturned by the Supreme Court in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2013] UKSC 46; [2014] AC 160, but Unilin nonetheless reflects an obiter approval by the Court of Appeal of the practice, in a patent inquiry or account, of considering alleged acts of infringement which the trial judge has not specifically addressed.
The relationship between patent practice and the rule in Henderson v Henderson
The evidence
"• Information as to other products manufactured by your client which contain the same features as found in the [products PC1108, 1109 and 1110]. In this regard, our client is aware of your client's products PC1106, 1107 and 1111-1113, which appear to be very similar to [the products already mentioned], and our client strongly suspects that those products are also infringing."
Alcon's solicitors responded on 1 June 2011, saying nothing about products PC1106, 1107 and 1111-1113. On 3 June 2011 AP Racing's solicitors served the Particulars of Claim and Particulars of Infringement. The latter used different product codes to identify the calipers complained of, but I was told that they included all of PC1108-1110 and PC1106, 1107 and 1111-1113.
The arguments
Analysis