Shenzhen Carku Technology Co Ltd v The Noco Company

Summary judgment in a patent action requires the court to have the evidence needed to decide the issue fairly. A patent construction issue is not automatically unsuitable for summary determination, but caution is required where construction depends on the skilled person, common general knowledge, expert evidence or the doctrine of equivalents. The court must not permit an inadequately notified case, late evidence or an interim product description to circumvent the safeguards governing summary judgment.

An interim declaration is generally inappropriate where the underlying issue permits only a final answer, such as whether particular acts infringe a patent. Even where such relief is theoretically available, the applicant must show the high degree of assurance ordinarily required for mandatory injunctive relief.

The claimant sought summary judgment and an interim declaration that products sold by or associated with it did not infringe the defendant’s patent for vehicle jump-starting apparatus. It also sought other substantive relief, including revocation and relief concerning threats, but the applications considered in this judgment concerned non-infringement.

The claimant relied on evidence describing 29 products, but detailed technical evidence existed for only three. Its interim product description and supporting evidence had been amended after the defendant served expert evidence. The claimant also sought to raise construction, validity, prior-art and patent-prosecution-history arguments without giving the notice required for summary judgment.

The central issues were whether the evidence justified summary judgment on integers concerning a reverse-polarity sensor and a power FET switch, and whether an interim declaration could properly be granted to assist the claimant after products had been removed from Amazon’s marketplace.

1. Summary judgment. The application for summary judgment was refused. The principles stated in Easyair v Opal Telecom [2009] EWHC 339 (Ch) applied. The court had to consider the evidence reasonably expected to be available at trial and should hesitate before finally deciding an issue where fuller factual investigation might affect the result.
2. The claimant had not established how most of the products worked. The evidence concerning the three products examined by the defendant’s expert raised a triable issue that their outputs depended on reverse-polarity signals and that integer 1.7 was satisfied. The expert evidence also provided an arguable case that integer 1.6, concerning a power FET switch connected between the power supply and output port, was satisfied, including on the doctrine of equivalents.
3. Patent construction did not automatically prevent summary judgment, but the court had to proceed cautiously where the meaning depended on the skilled person and attributed technical knowledge, as explained in Nampak Plastics Europe Limited v Alpla [2015] FSR 11. The absence of expert evidence concerning equivalents and common general knowledge reinforced the need for a trial.
4. The procedural safeguards in CPR Part 24 were important. Following Price v Flitcraft [2020] EWCA Civ 850, the applicant had to give proper notice of the issues and evidence relied upon. The claimant had not given the required notice of the interim product description, its proposed construction arguments, or most of its validity and prior-art case. Those matters could not properly support summary judgment.
5. The validity arguments were in any event insufficiently clear and convincing for summary determination. The patent prosecution history raised triable issues concerning admissibility and clarity, and isolated file-wrapper material was particularly unsuitable as the basis for summary judgment.
6. Interim declaration. The application was also refused. Applying the reasoning in Amalgamated Metal Trading v City of London Police [2003] 1 WLR 2711, N v Royal Bank of Scotland plc [2017] EWCA Civ 253 and British Airline Pilots’ Association v British Airways [2018] EWHC 1889 (QB), infringement was a yes-or-no question permitting a final, not temporary, answer. Even if an interim answer were possible, the claimant lacked the high degree of assurance required for mandatory injunctive relief.
7. The defendant was awarded its costs in any event, subject to detailed assessment, with £100,000 payable on account. Indemnity costs were refused.

First-instance decision. The judge refused permission to appeal, observing that permission would have to be sought from the Court of Appeal.