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| Lancashire Hotpot |
Patents Court (Nicholas Caddick KC) Price and others v Flitcraft Ltd and others [2022]EWHC 3381 (Pat) (20 Dec 2022)
Possibly for the first time since the merger of the Lancaster Palatinate Court with the High Court, a patent trial has taken place in Manchester. Both sides were based in the North West - the claimants in Preston and the defendants in Bolton. The claimants' solicitors were in Salford and the defendants' in Warrington. The claimants' counsel, Stephen Grime KC and Jonathan King practise from Deans Court Chambers. The defendant's counsel, Giles Maynard-Connor KC, practises from Exchange Chambers.
In that action, Philip Price, the inventor of an "Insulated timber framed building structure and components thereof" for which he was granted British patents GB2415714C and GB 2436989B and Supawall Ltd, his exclusive licensee, sued Flitcraft Ltd., Flitcraft Timber Frame Ltd. and their directors Garry and Thomas Flitcraft for patent infringement and passing off. The action came on for trial before Nicholas Caddick KC sitting in Manchester as a Deputy Judge of the High Court between 11 and 17 Oct 2022. He handed down his judgment on 20 Dec 2022 (see Price and others v Flitcraft and others [2022] EWHC 3381 (Pat) (20 Dec 2022)).
The learned deputy judge dismissed Mr Price's claim because he was adjudged bankrupt on 27 July 2011 whereupon both patents and his copyright in a drawing that he made vested in his trustee in bankruptcy. He might have acquired the copyright in photographs that his father had taken had his mother taken out a grant of probate and executed an assent but she didn't. Mr Caddick dismissed both claimants' claims against Flitcraft Timber Frame Ltd because it had never traded. Supawall's claim for passing off arose out of Flitcraft's registration of the domain names <mapletimberframe.org>, <mapletimberframe.info> and <mapletimberframe.co.uk> because MAPLE TIMBER FRAME was a sign under which Supawall had traded. The deputy judge dismissed the passing off claim - not without some hesitation - because Flitcraft had never used those domain names and was unlikely to do so.
The only claim that might have succeeded was for the marketing and supply of a product referred to in the judgment as the "Old Injectawall Product" which Flitcraft sold until June or July 2019. That was because the defendants admitted infringement. Sadly, the transcript does not say which claim was infringed.
Flitcraft's liability was, however, subject to the determination of one outstanding point. S.67 (1) of the Patents Act 1977 provides:
"Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in the provisions of this Act relating to infringement shall be construed accordingly."
One of the provisions to which that right was subject was s.67 (3):
"In any proceedings taken by an exclusive licensee by virtue of this section the proprietor of the patent shall be made a party to the proceedings, but if made a defendant or defender shall not be liable for any costs or expenses unless he enters an appearance and takes part in the proceedings."
The claimants would have fulfilled that requirement had Mr Price acquired the patents after his discharge from bankruptcy which they actually argued had taken place through an assignment to one Fred Bridge before the bankruptcy and a reassignment back after the discharge. Unfortunately for the claimants, Mr Caddick held that there had been no assignment and that Mr Price had lost his patents and copyrights when he was adjudged bankrupt. The claimants could have joined the trustee in bankruptcy as a party to the action but nobody addressed the eventuality at trial. Mr Caddick has invited further argument on the point as he did not think it was right to dismiss the claim on grounds that had occurred to him but not to counsel.
Before the trial, Mr Recorder Campbell KC had ruled that Mr Thomas Flitcraft was jointly liable with his company as he was the controlling mind. At trial, the deputy judge held that Garry was similarly liable for the same reason.
Should anyone want more information, I have written about the case in Patents, Copyright and Passing off - Price v Flitcraft Ltd 16 Jan 2023 NIPC Law. I am very willing to discuss it by phone should anybody wish to call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form. I also hope to talk about the case at Informa's Cambridge IP Law Summer in Downing College between 7 to 11 Aug 2023 to which I have today accepted an invitation to speak
Although this case is a little unusual in that there appears to have been no challenge to the validity of the patents on grounds of obviousness or anticipation despite the copious amounts of prior art that shows up on Google Patent searches and there was no argument on the interpretation of the claims it nevertheless marks a significant milestone. The Lancaster Palatinate Court had patent jurisdiction and according to the older editions of Terrell it actually exercised it on at least two occasions. When the Palatinate Court merged with the High Court pursuant to s.41 (1) (a) of the Courts Act 1971 the jurisdiction to hear patents and registered designs cases from the North passed to the Patents Court in London. Parties to patent or registered design disputes from the country's great manufacturing regions have had to traipse down to the Smoke with (or as often as not without) their usual legal advisors for the last 50 years or so. Something that their competitors in Germany, the United States and other countries do not have to endure.
Para 4 of the Patents Court Guide states:
"If the parties so desire, for the purpose of saving time or costs, the Patents Court will sit out of London."
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