LG Electronics Inc v Sony Europe Ltd & Ors

Summary judgment should be granted only where the evidence establishes that the opposing party has no realistic prospect of success. The court must avoid a mini-trial and should hesitate to determine factual issues where a fuller investigation may affect the outcome. A short point of law or construction may be decided summarily where the evidence is sufficient and the parties have had a proper opportunity to address it. Where the legal test for public availability of allegedly confidential prior art remains uncertain and the factual foundation is incomplete, the issue should be determined at trial. The relevance of the same document to common general knowledge and entitlement may also make summary determination unsatisfactory.

LG brought patent infringement proceedings concerning three Blu-Ray patents. Sony defended the claim and counterclaimed for revocation, relying on a 1997 DVD specification as prior art and contending that it affected novelty, obviousness, common general knowledge and entitlement.

LG applied for summary judgment on whether the DVD specification had been made available to the public before the patents’ priority date. LG relied on confidentiality markings, non-disclosure and licensing restrictions, and correspondence describing the DVD books as trade secrets. Sony relied on evidence that many companies had obtained copies and had access to the contents.

1. Application dismissed. The applicable summary judgment principles were those summarised in Easy Air Ltd v Opal Telecom Ltd [2009] EWHC 339 (Ch) and cited with approval in A C Ward & Sons Ltd v Catlin (Five) Ltd [2009] EWCA Civ 1098, [2010] Lloyd’s Rep (IR) 301. The court had to assess whether Sony’s case had a realistic, rather than fanciful, prospect of success, without conducting a mini-trial.
2. LG’s evidence established a prima facie case that the DVD specification was confidential and subject to restrictions on use. That did not, however, establish conclusively that the document was unavailable to the public for patent law purposes.
3. The authorities disclosed room for debate about the correct legal test. In particular, the approach in Qualcomm Inc v Nokia Corp [2008] EWHC 329 (Pat) had to be considered alongside the EPO decisions, including T 50/02 Daikin Industries. Sony had a realistic prospect of proving that interested parties could obtain knowledge of the document’s contents for their own purposes. It was undesirable to decide the legal test without a clear factual foundation.
4. The relationship between public availability and common general knowledge was not sufficiently clear for summary determination. The point required concrete findings of fact and full legal argument.
5. The DVD specification would in any event remain relevant evidence on Sony’s lack-of-entitlement case and on the origins of the Blu-Ray technology. Its dissemination, contents and technical relevance therefore required examination at trial.

The issue was accordingly not fit for summary judgment and the application was dismissed.