Price & Ors v Flitcraft Ltd & Ors

For committal for contempt, the applicant must prove to the criminal standard that the defendant had notice of a sufficiently clear order, deliberately acted or failed to act, and knew the relevant facts. An intention to breach is unnecessary if the act itself was deliberate.

An order restraining patent infringement may be breached by offering an infringing product for disposal, even before manufacture or installation. Distributing a product brochure to potential customers may constitute such an offer where the brochure depicts the infringing product. Compliance obligations must be addressed actively and cannot be left to unidentified staff to determine what amounts to infringement.

The claimants had obtained summary judgment for patent and copyright infringement against the first, second and fourth defendants and injunctions requiring cessation of infringement, destruction of infringing products and works, removal of copyright works from websites, and service of a confirming affidavit.

The claimants applied to commit the fourth defendant, Thomas Flitcroft, and another director for alleged breaches. The application concerned continuing patent infringement, copyright infringement, failures to destroy products and works, refusal of inspection, and failure to serve a compliant affidavit. The court considered which breaches were proved to the criminal standard and whether any failure was inadvertent or justified by illness.

1. Applicable approach. Following FW Farnsworth v Lacy [2013] EWHC 3487 (Ch), the court required proof to the criminal standard that the defendant had notice of an unambiguous order, acted or failed to act, did so deliberately rather than inadvertently, and possessed the necessary knowledge. An intention to breach was not required.
2. Patent injunction. Under s 60(1) of the Patents Act, offering to dispose of an infringing product can constitute infringement. The continued distribution of the old brochure was an offer to dispose of the infringing Injectawall product and deliberately breached the injunction. The evidence did not establish to the criminal standard that the defendants continued manufacturing or supplying the old product. The court accepted, for this application only, that a new specification had been introduced, leaving any infringement issue concerning it for trial.
3. Copyright injunction and destruction. Multiple copyright images remained on the defendants’ websites and in the old brochure. These breaches were deliberate. The allegations concerning images on vans, cars, Facebook, Twitter and banners were rejected or disregarded because the order did not make the obligation sufficiently clear or the matters were not properly pleaded.
4. Destruction and inspection. The fourth defendant’s vague instruction to an unidentified team was inadequate. He had not given proper instructions or explained how infringement was to be identified. The destruction and inspection obligations were therefore breached.
5. Affidavit and relief. No affidavit was served by the deadline. The later affidavit was technically defective and substantively failed to confirm full compliance. The failure was deliberate, although the illness relied on was relevant to mitigation. Relief from sanction was refused. The technical defect in swearing before the defendants’ solicitor alone did not justify committal.
6. The application succeeded on most allegations. Sentencing was adjourned to permit the fourth defendant to purge his contempt and to address the appropriate custodial or financial penalty under Part 81.

The judgment concerned a committal application following this court’s summary judgment and injunction order of 12 June 2019. An application for permission to appeal that earlier order had been made to the Court of Appeal, but its outcome was not stated.