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You are here: BAILII >> Databases >> England and Wales High Court (Patents Court) Decisions >> Boegli-Gravures SA v Darsail-Asp Ltd & Anor [2009] EWHC 2690 (Pat) (29 October 2009) URL: https://www.bailii.org/ew/cases/EWHC/Patents/2009/2690.html Cite as: [2009] EWHC 2690 (Pat) |
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CHANCERY DIVISION
PATENTS COURT
Strand, London, WC2A 2LL |
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B e f o r e :
____________________
BOEGLI-GRAVURES SA |
Claimant |
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- and - |
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(1) DARSAIL-ASP LTD (2) ANDREI IVANOVICH PYZHOV |
Defendants |
____________________
Thomas Moody-Stuart (instructed by Streathers Solicitors LLP) for the Defendants
Hearing dates: 5-8 October 2009
____________________
Crown Copyright ©
MR JUSTICE ARNOLD :
Introduction
The background to the Patent
The Patent
"A device according to the preamble of claim 1 is e.g. known from US-A-5 007 271 or EP-B-925 911 to the applicant of the present invention. The device for satinizing a foil described therein comprises two embossing rolls that are arranged mutually displaceably such that a self-stabilizing effect results when the teeth of the embossing rolls interpenetrate, thereby achieving a high processing speed, on one hand, and a high precision, on the other hand. First of all, this provides a uniform satinizing, and when teeth are removed in a corresponding manner, a highly precise embossing of foils is obtained while the surface of the packaging foil remains untreated in those locations, however."
"The advanced prior art according to US-A-5 007 271 or EP-B-925 911 with regard to the embossing and satinizing quality and the remaining prior art have resulted in the desire and the need and thus the object of the present invention to provide a device for producing embossed structures that allows embossing the packaging foil with signs including optical effects that are dependent on the viewing position and/or the light source, thereby also allowing to produce security features that are very difficult to copy."
"As to the fundamental structure of a satinizing device, reference will be made to US-A-5 007 271 to the applicant of the present invention. A foil band is passed between two toothed satinizing rolls of hardened steel or another hard material of which one is fixedly supported and driven while the other one is freely rotatably journalled on an axle and is capable of being resiliently pressed against the driven roll with an adjustable pressure by spring force or by pneumatic or other means.
In the device according to EP-B-925 911, which also makes reference to US-A-5 007 271, both satinizing rolls are provided with a superficial toothing of the same kind which is schematically shown in Fig. 1 in a developed view. The latter is composed of pyramidal teeth that are arranged in rows extending in the circumferential direction, i.e. in the direction of rotation indicated by the arrow, and perpendicularly thereto in the axial direction. According to Fig. 2, the tips of the teeth are flattened, i.e. shortened in practice by at least 2%, preferably by up to 25% of the theoretical geometric tooth height. Furthermore, the edges of the pyramidal resp. frustropyramidal teeth are preferably chamfered. Instead of pyramidal teeth, it is also possible to use conical resp. frustroconical teeth."
" While these satinizing rolls of the prior art are provided with toothings of the same kind, it has been found that providing at least one roll with teeth of a different design, more particularly with respect to the tooth height and the tooth surface, allows producing embossed structures that may e.g. be designated as shadow embossings, where the intensity of the signs embossed within the satinized background varies according to the viewing angle of the observer and/or the direction and the kind of the lighting source, thereby producing a shadow-like effect."
"In the embodiment of Fig. 4, two teeth T1 are shown which are designed as the teeth according to Figs. 1 to 3 and all of which have the same geometric dimensions and produce a normal satinizing, as well as the teeth T2 at the left of Fig. 4, having e.g. a smaller tooth height, or alternatively different tooth flanks or surfaces. In the embossing process of the prior art, the teeth are completely eroded in the locations where the signs are to appear on the foil.
In principle, the teeth T2 of different height, shape, or surface than T1 may be arranged in any way, but the teeth T2 are advantageously arranged in a specific manner to produce patterns, letters, or other signs. Fig. 4 shows a simple arrangement forming e.g. the letter L. By arranging the teeth T2 in such a configuration, the letter is produced such that according to the viewing angle, a higher or lower contrast, resp. a higher or lower intensity is obtained while it is assumed here that the lighting source is constant and stationary. Alternatively, the position and/or the wavelength of the lighting source may be varied while the viewer is viewing the sign from the same angle, or both the viewing angle and the light source may change. Basically, the result always remains the same, i.e. the appearance of the sign changes as one or both or all parameters vary."
"This procedure is very useful in the production of codes resp. security features… "
"Such signs may be provided on packages for tobacco products, cigarettes, foods, chocolates, drugs or the like. Such packaging bands or foils are preponderantly composed of aluminium or of preponderantly easily foldable paper. ... Today, multilayered foils with a paper substrate and a metal layer, and foils provided with a thin vapour-deposited metallic layer are distinguished."
".. a respective tooth of one roll need not necessarily engage between four adjacent teeth of the other roll, as in Fig. 3, which illustrates the case of the so-called pinup-pinup configuration where the teeth of all rolls are directed outwards. On the contrary, in the embossing procedures of the invention, it may be useful to positively synchronise the embossing rolls, in which case it is also possible to use a so-called pinup-pindown configuration where the teeth of one roll are directed outwards and the teeth of a cooperating roll inwards."
The claims
"[a] Device for satinizing and simultaneously embossing packaging foils having a metallised surface or consisting of metal, comprising
[b] at least two embossing rolls that are
[i] connected to a driving system and
[ii] capable of being driven individually or in common,
[c] the rolls being adapted to be resiliently pressed against each other and
[d] the interpenetrating pyramidal or conical teeth of the rolls having flattened tips,
characterised in that
[e] pyramidal or conical teeth (T2) of at least one roll have a different geometric shape and/or surface than the teeth (T1) that are intended for satinizing
[f] in order to produce embossed signs (L) that modify the metallised surface of the packaging foil and whose appearance changes according to the viewing angle of the observer (O) and/or the kind and/or the position of the lighting source (LS) in these locations
[g] during the passage of the packaging foil."
"Device according to claim 1, characterised in that the different teeth (T2) have a smaller height than the remaining teeth (T1)."
"Device according to claim 1 or 2, characterised in that the different teeth (T2) have differently shaped flanks or edges than the remaining teeth (T1)."
"Packaging foil produced using a device according to one of the claims 1 to 7, which is satinized and provided on this satinized background with at least one sign (L) whose intensity changes according to the viewing angle (O) and/or the kind and/or the position of the lighting source (LS), characterised in that it comprises at least one group of signs (L) having the same appearance individually, in pairs or in groups."
The earlier Boegli patents
Boegli 271
"For embossing a metal foil the same is positioned between two similarly toothed rollers positioned so that the teeth of each roller engages [sic] the teeth of the other. A high-quality embossing is obtained which may be kept practically constant over long periods of operation. The rollers are mutually synchronised such that only one of these rollers need be coupled with a driving mechanism. The other roller is free and may easily be removed, replaced or adjusted in order to vary the force by which it is pressed against the foil and the driven roller respectively."
Boegli 911
"As to the fundamental structure of the embossing device, reference will be made to the above-mentioned US Patent No. 5 007 271. A foil band is passed between two toothed embossing rolls of which one is fixedly supported and driven while the other one is freely rotatably journalled on an axle and is capable of being pressed against the driven roll with adjustable pressure by spring force or by pneumatic or other means.
Both embossing rolls are provided with a superficial toothing of the same kind which is schematically shown in Fig. 1 in a developed view, and which comprises pyramidal teeth which are arranged in rows extending in the circumferential direction, i.e. in the direction of rotation indicated by the arrow, and perpendicularly thereto in the axial direction. As mentioned, Fig. 1 is a schematic representation, i.e. the pyramidal teeth are illustrated as if they had the precise geometric shape of a pyramid with an acute point, which was indeed the case in the mentioned embodiment of the prior art.
According to a novel feature, in Figs. 2 to 5, the points of the teeth are now flattened, i.e. the teeth are shortened by an amount ?A (Fig. 3) which in practice is equal to at least 2%, preferably 5 to 25% of the theoretical geometric tooth height. Furthermore, the edges of the pyramidal teeth resp. of the truncated pyramids are cut, which may e.g. be achieved by a generally erosive finishing treatment subsequent to the machining of the teeth, e.g. by etching or by galvanic erosion, which mainly affects the edges."
"It is also possible to lock the mutual roll positions as soon as the stable position of engagement is obtained and thus to exclude any risk that the rolls might jump from a stable position to a different one. For example, as soon as the stable position is attained, the axial position of the idle roll might be locked by clamping the axially displaceable roll axle, and a previously uncoupled play-free gear could be connected between the two rolls. Ultimately, the rolls could also be mutually positioned by play-free gears or in such a disposition that a mutual engagement in the sense of the invention is predetermined from the start."
"Device for embossing a foil, comprising a pair of rollers having toothings of the same kind and which are connected to a drive and capable of being driven individually or in common, the rollers being capable of being pressed against each other in a resilient manner, characterised in that the pyramidal teeth of toothing comprise flattened points and a rectangular ground plan …"
The addressee
The expert witnesses
Common general knowledge
Construction
Interpretation of the preamble in two-part claims
"(1) The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain:
(a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art;
(b) a characterising portion – preceded by the expression 'characterised in that' or 'characterised by' - stating the technical features for which, in combination with the features stated in sub-paragraph (a), it is desired to protect."
"20. From this Mr Vanhegan invited us to conclude that the skilled reader would have no, or at the very least only a slight presumption, that the pre-characterising portion of a claim was describing what the patentee considered to be old. He particularly emphasised the Board's statement that it is 'primarily relevant to the patent grant procedure.' Mr Meade on the other hand submitted that when the skilled man sees a pre-characterising clause he will strongly incline to the view that the skilled man saw that as being old. And that inclination will be reinforced (perhaps steepened is a better word) where the clause concerned is clearly said by the patentee to be based on prior art which he specifically acknowledges.
21. We accept Mr Meade's contention. Even without a two-part claim structure, because the skilled reader knows that the patentee is trying to claim something which he, the patentee, considers to be new, he will be strongly averse to ascribe to the claim a meaning which covers that which the patentee acknowledges is old. And if the patentee not only acknowledges that a particular piece of prior art is old but then has a pre-characterising clause which is fairly obviously based on it, the skilled reader will be even more strongly inclined to read that clause as intended to describe that old art."
[a] Device for satinizing and simultaneously embossing packaging foils
[b](i) connected to a driving system
[b](ii) capable of being driven individually or in common
[c] the rolls being adapted to be resiliently pressed together
[d] pyramidal or conical teeth … having flattened tips
"A. adj.
1. Of or relating to a pyramid or pyramids; sloping, as an edge or face of a pyramid.
2. a. Of the nature or shape of a pyramid; resembling a pyramid. Also fig. or in figurative context (cf. PYRAMID n. 8).
…
3. Specific technical senses.
a. Anat. and Zool. Designating structures of roughly pyramidal, conical, or triangular shape. Cf. PYRAMID n. 6, PYRAMIDALIS n.
b. Bot. Designating various plants or trees which are pyramid-shaped or have a pyramid-like or conical inflorescence or stem (usually translating the specific epithet pyramidalis).
…
d. Ophthalmol. Designating a cataract of conical or pyramidal form, esp. one of the anterior part of the lens, often protruding into the anterior chamber.
…
f. Anat., Zool., and Med. Of, relating to, or connected with the pyramids of the medulla oblongata (esp. in pyramidal tract n. at Special uses 2); of or relating to the pyramidal tracts.
4. Math. Designating any of a series of numbers beginning with unity, whose nth term is the sum of the first n terms of a series of polygonal numbers, each of which can be represented by balls arranged according to a certain rule in the form of a pyramid on the corresponding polygonal base."
"3. a. Archit. A structure or part of a building in the shape of a pyramid, as a spire, pinnacle, obelisk, etc.; Also: a gable, a pediment
b. In full pyramid tent. A tent shaped like a pyramid, typically with four triangular sides supported by a central pole.
4. a. Any object in the shape of a pyramid; (also) a number of things arranged or piled up in this shape.
b. Hort. A pyramidal or conical shape (widest at the base and tapering to the top) given to a tree or shrub by pruning or training (chiefly attrib.). Hence: a tree, esp. a fruit tree, pruned or trained in this fashion, now usually (more fully dwarf pyramid) on a dwarfing rootstock. Cf. pyramid-trained adj. at Compounds 2, pyramid training n. at Compounds 2.
5. a. A plane figure suggesting the profile of a pyramid; a triangular or wedge-shaped figure or formation, such as a triangular arrangement of players or pieces in sports and games.
…
6. a. Anat. Any of various structures of more or less pyramidal or conical form; spec. (a) each of the conical projections of renal medulla into the pelvis of the kidney (also called Malpighian pyramid); (b) the petrous part of the temporal bone; (c) (more fully anterior pyramid) each of two bundles of corticospinal nerve fibres located on each side of the median fissure of the ventral surface of the medulla oblongata.
…
II. Extended uses.
8. fig. or allusively, chiefly with reference to shape or form; (now) esp. an organization or system that is structured with fewer people or things at each level as one approaches the top."
"I would add this. The patentee here was faced with a familiar problem. He was trying, in the words of Lord Hoffmann at [34] 'to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition.' That is particularly hard when you are trying to describe a complicated shape. By and large you need to start from some point of reference to a known sort of shape (here ellipse and cone) to get going on such a task. That is what the patentee was obviously doing when he chose his composite phrase 'generally elliptically shaped cone'. It would be wrong in those circumstances to suppose that he was taking anything like a strictly geometric approach. "
"If the issue was whether a feature embodied in an alleged infringement which fell outside the primary, literal or acontextual meaning of a descriptive word or phrase in the claim ('a variant') was nevertheless within its language as properly interpreted, the court should ask itself the following three questions:
(1) Does the variant have a material effect upon the way the invention works? If yes, the variant is outside the claim. If no—
(2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no, the variant is outside the claim. If yes—
(3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim.
On the other hand, a negative answer to the last question would lead to the conclusion that the patentee was intending the word or phrase to have not a literal but a figurative meaning (the figure being a form of synecdoche or metonymy) denoting a class of things which included the variant and the literal meaning, the latter being perhaps the most perfect, best-known or striking example of the class."
[e] pyramidal or conical teeth (T2) of at least one roll have a different geometric shape and/or surface than the teeth (T1) that are intended for satinizing
[f] … whose appearance changes …
Infringement
Darsail's rollers
Supply of the Famous Flavor rollers to Mr Green
"Dear Mr Ivanovich/Vladimirovich/Aleksandrovich
Good afternoon Sirs
I wasn't exactly certain who to address my e-mail to and therefore I have included the three contact names shown on your website.
First of all let me introduce myself. My name is Robert Green and I'm a partner in R R & T Associates, …, Chadwell Heath, Romford, Essex, … , Tel 00 44 … , fax 00 44 … , mobile 00 44 …. We are a company who source on behalf of clients various products including tobacco machinery. We recently advertised in relation to spares which were available and as a result of which we received a call from our clients asking if we were able to source:-
One set of embossing rollers for an old MOLINS type of machine as follows:-
Molins Part No. 41591-200 to 249 with b 69.4 mm Molins Part No. 41591-250 to 259 with b 138.8 mm
the pitch must be of 0.3 mm with a pin-up/pin-up style with the monogram as per design No. 06803 'Famous Flavor' 25%.
We discovered your company as a result of research we conducted on the internet and also we note you have been exhibiting at various trade fairs.
This is an initial enquiry and please find attached the drawing re the Molins 41591-200-249 and the R R & T design number 060803.
If there is any difficulty with these drawings we can obviously fax them through to you.
Payment, if you are able to meet our requirements, will be made through the R R & T bank account.
Your earliest reply would be appreciated."
"Subject to the following provisions of this section, a person (other than the proprietor of the patent) also infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom."
Darsail's website
"The main activity of our company is production of spare parts for tobacco equipment. Following the vast spectrum of spare parts that are used in cigarette production, we chose the following to be focused on:
* Foil embossing rollers according to the pattern 'metal-metal'
These spare parts fit and might be easily installed on any kind of machines in units manufactured by different well-known producers: … , GD, … , MOLINS, … and others. ...
A moderate price and short time of delivery can also be added to the list of benefits of our products ...
Tobacco factories of both multinational companies (namely, IMPERIAL, GALLAHER, JTI and BAT) and local independent companies (such as DONSKOI TABAK, NEVO-TABAK) are among our customers. In 2004 we started to export our products to the countries of CAS and also to countries of Western Europe and Southwest Asia. ...
Our embossing rollers can be used in packaging machines by Molins, GD, ... We produce rollers with 0,16 mm – 1 mm embossing pitch for:
* regular embossing without logo
* embossing with logo and multilogo (like SOVEREIGN)
* fragmentary embossing, when only the logo embosses (like SOBRANIE)
* different level embossing, when both logo and background emboss but the embossing level of the logo is lower than the one of the background
* NEW!!! Embossing with 'PIRAMIDA' alternating angle (hologram effect)
The standard time of a set of rollers making with our technology is two weeks.
How to work with us:
answer the technical questions - (see DOWNLOAD section)
e-mail to www.darsail.ru the logo design ...
sign a spare parts supply contract (see DOWNLOAD section)
you can find an approximate price of embossing rollers set in our price-list (DOWNLOAD section)."
"I believe it is clear from these authorities that placing a mark on the Internet from a location outside the UK can constitute use of that mark in the UK. The Internet is now a powerful means of advertising and promoting goods and services within the UK even though the provider himself is based abroad. The fundamental question is whether or not the average consumer of the goods or services in issue within the UK would regard the advertisement and site as being aimed and directed at him. All material circumstances must be considered and these will include the nature of the goods or services, the appearance of the website, whether it is possible to buy goods or services from the website, whether or not the advertiser has in fact sold goods or services in the UK through the website or otherwise, and any other evidence of the advertiser's intention."
Supply of foil samples
Nielsen
"This invention relates to a method of embossing sheet material by passing it through a nip between a pair of complementary rollers each having a plurality of projections projecting from its surface, in the nip each projection of each roller engaging between projections of the other roller."
At this stage the specification is unspecific as to the nature of the "sheet material" to be embossed.
"A method of and apparatus for embossing is known wherein the projections on the rollers are generally hemispherical and wherein before the sheet material is passed to the nip it is caused to pass between a considerable number of co-operating pairs of rollers having peripheral ridges and grooves whereby the material becomes grooved and its width is reduced. In this known method and apparatus the material is clamped between the peak of each projection of each roller and the bottom of a corresponding depression between the projections on the other roller and bulges are formed on both sides of the material. In this process no stretching of the material takes place and there is obtained a material which may be expanded in all directions."
As can be seen, this passage describes a process which takes place before the sheet material is passed to the nip, that is to say, before the embossing step. Although the nature of the sheet material is not specified, the process described is one that was employed for the manufacture of crêpe paper, kitchen roll and similar materials. As I understand the evidence, it is not a process which was generally used for packaging foils.
"An object of the present invention is to provide a method, of embossing sheet material, which is cheaper than heretofore and an apparatus, for embossing sheet material, which is cheaper to manufacture than known machines, and is simpler.
A further object of the invention is to provide a method of and apparatus for producing an embossed sheet material which has good strength and good impact absorption capacity at right angles to the plane of the material."
The first paragraph describes objects that might apply to any material. The second paragraph describes an object which is particularly relevant to paper materials of the kind described above.
"According to the invention there is provided a method of embossing sheet material comprising passing it through a nip between a pair of complimentary rollers, each roller having a plurality of projections, each of generally frusto-pyramidal configuration with a four-sided bases, extending outwardly therefrom and each projection of each roller engaging, in the nip, between projections of the other roller, and wherein each projection has one pair of opposite corners thereof aligned parallel to the axes of the rollers."
"In the method of the invention of the sheet material is preferably gripped between the sides of adjacent co-operating projections, the material overlying the peak of the projections not being gripped and therefore being stretched. By means of the stretching there may, furthermore, be obtained such a distribution of the material of the sheet that the sheet becomes thinner in the vicinity of the peaks formed therein while it completely or essentially retains its original thickness between the peaks so that it has a relatively large strength and impact absorption capacity at right angles to its plane. The method and apparatus of the invention have the advantage that only a single pair of rollers are necessary and no preliminary treatment (for example wetting of paper) is necessary.
When the method and apparatus are used with paper or other fibrous material, there may be obtained a soft, textile-like texture.
To effect the said stretching the projections may be so shaped that the sheet material which overlies the peak of each projection is not touched by the other roller. Thus the material abutting the peaks may move and be stretched. When the method and apparatus are applied to paper or other fibrous material the stretched peaks projecting on both sides thereof will have good moisture absorption capacity so that the material will be well-suited for use as napkins or similar purposes. "
This passage is clearly discussing the application of the method of the invention to paper or other fibrous materials to produce napkins or similar products. Furthermore, much of what is said in this passage would be inapplicable to packaging foils. For example, good moisture absorption capacity is not generally a requirement for packaging foils and would be positively undesirable for cigarette packaging foils.
"The sides of the projections may, at least over their upper portions, be shaped like a part of an involute curve. Thus the projections can co-operate in a manner similar to involute cogs of a pair of involute cogwheels. A gentle treatment of the material is hereby affected so that intensive embossing may be carried out without ripping the material."
"The invention is not limited to the precise details of the foregoing embodiment and variations can be made thereto. For example in the shown embodiment all the projections are identical, but the height and shape of the projections may vary, for instance so as to obtain a particular patterned effect. For instance it will be possible to provide some of the projections with a larger peak surface, which may be of importance when the embossed material is to be glued to a flat sheet. The material may be paper, fibrous sheet material, metal foil or thermoplastic sheet material. The two sets of grooves are arranged at the same angle to generatrix (g)-(g). The embossed material may be used for packaging, either directly or after being glued to one or two plain sheets, for resilient supporting purposes or for many other purposes. When the material is of paper or other fibrous material a textile-like effect will be obtained, as the product is easily flexible in all directions. Preliminary treatment of the material is normally not necessary but the material can be subjected to such treatment, for instance moistening, before embossing."
It is common ground that among the options disclosed by this passage are to use the machine for embossing metal foil and to use the embossed material for packaging.
Novelty
Obviousness
"(1) (a) Identify the notional 'person skilled in the art';
(b) Identify the relevant common general knowledge of that person;
(2) Identify the inventive concept of the claim in question or if that cannot readily be done, construe it;
(3) Identify what, if any, differences exist between the matter cited as forming part of the 'state of the art' and the inventive concept of the claim or the claim as construed;
(4) Viewed without any knowledge of the alleged invention as claimed, do those differences constitute steps which would have been obvious to the person skilled in the art or do they require any degree of invention?"
"The question of obviousness must be considered on the facts of each case. The court must consider the weight to be attached to any particular factor in the light of all the relevant circumstances. These may include such matters as the motive to find a solution to the problem the patent addresses, the number and extent of the possible avenues of research, the effort involved in pursuing them and the expectation of success."
Liability of Mr Pyzhov
"49. First, a director will not be treated as liable with the company as a joint tortfeasor if he does no more than carry out his constitutional role in the governance of the company—that is to say, by voting at board meetings. That, I think, is what policy requires if a proper recognition is to be given to the identity of the company as a separate legal person. Nor, as it seems to me, will it be right to hold a controlling shareholder liable as a joint tortfeasor if he does no more than exercise his power of control through the constitutional organs of the company—for example by voting at general meetings and by exercising the powers to appoint directors. Aldous L.J. suggested, in Standard Chartered Bank v. Pakistan National Shipping Corp. (No. 2) [2000] 1 Lloyd's Rep 218 at 235—in a passage to which I have referred—that there are good reasons to conclude that the carrying out of the duties of a director would never be sufficient to make a director liable. For my part, I would hesitate to use the word 'never' in this field; but I would accept that, if all that a director is doing is carrying out the duties entrusted to him as such by the company under its constitution, the circumstances in which it would be right to hold him liable as a joint tortfeasor with the company would be rare indeed. That is not to say, of course, that he might not be liable for his own separate tort, as Aldous L.J. recognised at paragraphs 16 and 17 of his judgment in the Pakistan National Shipping case.
50. Second, there is no reason why a person who happens to be a director or controlling shareholder of a company should not be liable with the company as a joint tortfeasor if he is not exercising control through the constitutional organs of the company and the circumstances are such that he would be so liable if he were not a director or controlling shareholder. In other words, if, in relation to the wrongful acts which are the subject of complaint, the liability of the individual as a joint tortfeasor with the company arises from his participation or involvement in ways which go beyond the exercise of constitutional control, then there is no reason why the individual should escape liability because he could have procured those same acts through the exercise of constitutional control. As I have said, it seems to me that this is the point made by Aldous J. (as he then was) in PLG Research Ltd v. Ardon International Ltd [1993] F.S.R. 197.
51. Third, the question whether the individual is liable with the company as a joint tortfeasor—at least in the field of intellectual property—is to be determined under principles identified in CBS Songs Ltd v. Amstrad Consumer Electronics plc [1988] AC 1013 and Unilever plc v. Gillette (U.K.) Ltd [1989] R.P.C. 583. In particular, liability as a joint tortfeasor may arise where, in the words of Lord Templeman in CBS Songs v. Amstrad at page 1058E to which I have already referred, the individual 'intends and procures and shares a common design that the infringement takes place'.
52. Fourth, whether or not there is a separate tort of procuring an infringement of a statutory right, actionable at common law, an individual who does 'intend, procure and share a common design' that the infringement should take place may be liable as a joint tortfeasor. As Mustill L.J. pointed out in Unilever v. Gillette, procurement may lead to a common design and so give rise to liability under both heads."
Conclusions
i) Darsail has threatened to infringe and has infringed the Patent;
ii) the Patent is valid over Nielsen;
iii) Mr Pyzhov is jointly liable for the infringement.