The UK courts have the power to dispose of all or part of a case without a trial if there is no real prospect of success. In a decision upheld by the Court of Appeal, the defendant in Nampak Plastics Europe Limited v Alpla UK Limited has successfully made use of these powers, receiving a favourable declaration of non-infringement from the High Court without the need for a trial.

Background

Nampak and Alpla are rivals in the plastic milk bottle business. Nampak contended that Alpla’s bottle, referred to as ECO 1, infringed its UK patent. Alpla denied infringement and contended that the patent was invalid. The trial on these issues is set for January 2015. 

In the meantime, Alpla applied to Nampak for a declaration that a proposed bottle design (ECO 2), which had not been launched, did not infringe Nampak’s patent. Nampak did not provide the requested declaration. Alpla therefore applied to the High Court for a summary judgment (a decision without a trial) providing a declaration that the ECO 2 design did not infringe Nampak’s patent.

Summary judgments

Summary judgments are issued only where there is no real prospect of success for one of the parties and there are no other compelling reasons why the case should go to trial. 

Summary judgments are rare in patent cases. This is due to the requirement that the court view the patent claims and the alleged infringement through the eyes of the skilled person in the relevant technical field. In order to do this with confidence, the court will usually require a trial in order to hear expert evidence regarding the common general knowledge of the skilled person.

Experts not required

Nampak’s patent claims described the shape of the milk bottle using ordinary English words with no special or technical meanings. The contentious issue related to the position of the boundary between the sides and the corners of the ECO 2 design, since this determined whether the ECO 2 design fulfilled the requirements of Nampak’s patent claim. 

The High Court considered a summary judgment suitable in this instance due to:

  • the simple nature of the technology;
  • the lack of technical terms in the claim; and
  • Nampak’s inability to specify how further evidence might affect the High Court’s interpretation of the claim. 

Therefore, the High Court was in as good a position as it could be to decide on the matter. After interpreting the patent’s claims in light of the specification, the High Court concluded that Alpla’s ECO 2 design did not infringe the patent. Therefore, the High Court was able to make a declaration that the ECO 2 design did not infringe Nampak’s patent without the need for a trial.

In reviewing the High Court’s decision, the Court of Appeal noted that it could not see anything credible emerging at trial, from experts or otherwise, that could alter its interpretation of this straightforward patent. The decision was therefore upheld.

Comment

Alpla’s successful pursuit of a summary judgment gave it commercial certainty that the ECO 2 design did not infringe without the need to wait for a trial. Although this is a rare example of the UK courts deciding on a patent case without a trial, it demonstrates the viability of this approach for patent cases where the technology is simple. It also demonstrates that patent cases are not immune from summary judgments. Therefore, justified reasons for conducting a trial must be given if an opposing party has made an application for a summary judgment in its favour.

Richard Darby

Jennie Cox

This article first appeared in IAM magazine. For further information please visit www.iam-magazine.com.