FH Brundle (A Private Unlimited Company) v Perry

A communication constitutes a threat of patent infringement proceedings where a reasonable recipient, considering the communication as a whole and the relevant circumstances, would understand that the writer intends to enforce intellectual property rights through proceedings. The threat may be conditional, future, or veiled. A person to whom the threat is directed is ordinarily a person aggrieved.

In construing a product claim, expressions such as for, suitable for, adapted to and adapted in use to are ordinarily assessed objectively through the eyes of the skilled person. They do not introduce the designer’s subjective intention. Suitability is a question of fact and degree. Where substantial physical modification is required before the product can perform the stated function, it may not be suitable for that function.

Brundle brought proceedings under section 70 of the Patents Act 1977 concerning letters sent by Perry alleging infringement of his fence-bracket patent and threatening proceedings unless an amicable solution was reached. Perry counterclaimed for patent infringement against Brundle and brought a Part 20 claim against Betafence and Britannia Fasteners.

The issues included whether the letters contained threats, whether Brundle was a person aggrieved, whether the products fell within claim 1 of the patent, and whether Brundle’s threatened conduct would infringe. The court also considered the effect of restoration of the patent after its lapse and the construction of structural and purpose-related features in claim 1.

1. The threats. The October letter expressly threatened patent infringement proceedings. The November letter contained a conditional threat, dependent on the provision of information, and the December letter maintained the earlier threat when read in context. A reasonable recipient’s seriousness or response to the threat was irrelevant. The reference to the Nylofor 3D bracket covered both variants.
2. Person aggrieved. Brundle was a person aggrieved because the threats were directed to it.
3. Construction of claim 1. The claim was a product claim and all its features were structural, although some structures were defined by the purposes for which they were suitable. The expressions adapted to and adapted in use to were construed objectively as equivalent in this claim to suitable for. The assessment was made through the eyes of the skilled person and involved no subjective element concerning the designer’s intention. The qualification inherent in suitability is one of fact and degree. If substantial physical modification is needed, the product may cease to be suitable for the claimed purpose.
4. Infringement. The Beam Bracket did not fall within claim 1. In the mesh-fence context it lacked features concerning embracing the corner, lying along the top of the panel, lying on each side of the panel, and the required apices. In the wooden-fence context it additionally required indentations in the panel and post and still failed to satisfy the relevant features.
5. Disposition. Perry had no defence under section 70(2A) of the Patents Act 1977. Brundle’s action succeeded. Perry’s counterclaim against Brundle and Part 20 claims against Betafence and Britannia Fasteners were dismissed.

The judgment records a case management conference before Arnold J on 22 July 2013, at which the issues for trial were identified. An application to transfer the proceedings to the Patents Court was adjourned on 20 November 2013 and was not renewed.