Fontem Holdings 1BV & Anor v Ten Motives Ltd & Ors

Summary judgment on patent infringement may be appropriate where the court has the necessary evidence and the issue can fairly be decided summarily. However, patent construction requires caution because the meaning of general language may depend on the skilled person, common general knowledge and technical context. A claim should be construed purposively, but specific embodiments should not ordinarily be imported as limitations into general claim language.

A stay of national patent proceedings pending EPO opposition proceedings is the default where no other factors arise. The ultimate question is whether, in all the circumstances, a stay achieves a balance of justice between the parties. Relevant considerations include delay, market conditions, the effect on commercial certainty, wasted costs, possible undertakings and the stage at which a stay would take effect.

Fontem, proprietor of a European patent for an electronic cigarette, brought infringement proceedings against 10 Motives. 10 Motives denied infringement and alleged that the patent was invalid. The parties agreed that the applications could be determined by reference to claim 1.

10 Motives applied for summary judgment on the basis that its Cirro and V2 products could not infringe on the proper construction of the claim. In the alternative, it sought a stay pending opposition proceedings before the European Patent Office. The issues were whether the claim’s requirements concerning detachability and liquid storage were suitable for summary determination, and whether justice required a stay.

1. Summary judgment. The application was refused. The principles in Easy Air Limited v Opal Telecom Ltd [2009] EWHC 339 permitted the court to decide a short point of law or construction summarily where the evidence was sufficient and the parties had a fair opportunity to argue it. But Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293 required caution in patent construction because the court must consider what the skilled person would have understood, including the relevant common general knowledge.
2. Applying the purposive construction principles in Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Limited [2009] EWCA Civ 1062, it was realistically arguable that the patent had more than one purpose, including improving aerosol effects and atomising efficiency. It was also realistically arguable that the point at which the liquid storage component was detachable was a technically minor difference falling within the claim when read purposively.
3. It was further arguable that the Cirro products contained a liquid storage component formed by, or comprising, the transparent barrel walls; that claim 1 did not require a discrete component of the kind shown in a specific embodiment; and that expert evidence about technical function could affect construction. The approach in Nokia GmbH v IPCOM GmbH [2009] EWHC 3482 (Pat) meant that details of a specific embodiment should not be written into a generally expressed claim.
4. Stay. The application for a stay was refused. Under IPCOM GmbH v HTC Europe Co Limited [2013] EWCA Civ 1496, the discretion had to balance justice in all the circumstances. Although a stay pending EPO validity proceedings was the default where no other factors existed, the likely lengthy delay, the rapidly developing market, the need for commercial certainty, the risk of market distortion, the value of timely assessment of wrongdoing, settlement prospects and limited wasted costs favoured continuation.
5. The action was to proceed with the related actions in May 2016. A further stay application could be made before relief was determined. If infringement were established, financial relief could be subject to an undertaking to repay if the patent were later revoked. The observations in Adaptive Spectrum and Signal Alignment Inc v British Telecommunications plc [2013] EWCA Civ 1513 and Smith & Nephew v ConvaTec [2015] EWCA 803 supported that staged and nuanced approach.