Brundle v Perry & Ors

For patent infringement, the extent of the monopoly is determined by the claims. The specification may assist in interpreting a claim, but matter appearing only in the specification is not protected. An accused product must contain every feature of the relevant claim. Claims must be fairly interpreted for both patentees and competitors; there is no presumption in favour of the patentee, and competitors may design around the patent. Permission to appeal should be refused where the proposed arguments do not disclose a real prospect of showing that the first-instance judge was wrong on all features necessary for infringement.

Mr Perry’s patent concerned brackets for attaching fence panels to fence posts. After receiving information suggesting possible infringement, he made threats against Better Fence. His Honour Judge Hacon held that the threats were groundless and granted an injunction restraining their repetition.

Mr Perry renewed his application for permission to appeal. He challenged the interpretation of claim 1 in relation to the Beam bracket and Universal bracket, particularly in the context of wire mesh fencing. He also suggested that the circumstances might support a passing-off claim, although that claim had not been advanced below. The central issue was whether there was a real prospect of establishing that the judge had wrongly concluded that the accused products lacked required claim features.

1. Disposition. The application for permission to appeal was dismissed. There was no real prospect of success, even if some of the judge’s conclusions could be challenged at the margins.
2. Scope of the patent monopoly. The specification must be considered when interpreting a patent claim, but the extent of the monopoly is determined entirely by the claim. Matter appearing in the specification but not in the claim is outside the patent monopoly.
3. Required claim features. The judge had analysed claim 1 into nine features. The accused product could infringe only if it possessed all of them. The Beam bracket was found to lack several features. Mr Perry’s submissions concerning the meaning of particular terms did not demonstrate an arguable error in every feature found to be absent.
4. Claim construction. The claim had to be fairly interpreted for the benefit of both the patentee and persons wishing to make rival products. There was no patent-law principle that doubts should be resolved in favour of the patentee. A rival may design around the patent. The passing-off point could not be raised for the first time on this application because it had not been the case advanced before the judge.

1. High Court (Intellectual Property Enterprise Court). His Honour Judge Hacon held that Mr Perry had made groundless threats of patent infringement and granted an injunction restraining repetition of those threats.
2. Court of Appeal (Civil Division). The court refused permission to appeal and dismissed the application in [2015] EWCA Civ 672.