Leigh Maxwell Remfry & Anor v GKN Aerospace Services Limited & Anor

For contributory patent infringement under section 60(2) of the Patents Act 1977, the relevant intention is that of an ultimate or end user who will put the invention into effect. For a bespoke product supplied to one identified customer, the claimant must show that customer’s probable intention, known or obvious to the supplier in all the circumstances. A merely possible use is insufficient. At the strike-out or summary-judgment stage, the pleaded and evidential case must show a realistic prospect of establishing that intention. A late amendment which is a bare assertion and contradicted by the evidence should be refused.

The claimants alleged that the defendants had infringed a patent concerning a pressure-gravity refuelling coupling. The principal application concerned alleged contributory infringement under section 60(2) of the Patents Act 1977, based on an asserted intention that a supplied coupling would later be modified to include a dry-break connector.

The second issue concerned the second claimant’s entitlement to claim under an exclusive licence during a period when it had been struck off the register. The claimants relied on an alleged oral licence said to have been granted after termination of an earlier written licence. The court considered strike out, summary judgment and proposed re-amendment.

1. FORC modification issue: The claim based on modification of the supplied coupling was struck out. The pleaded case did not assert that ultimate users would probably intend to modify the coupling to include a dry-break connector. Its principal case was that the coupling would probably be replaced, with modification presented only as an alternative possibility.
2. Under section 60(2) of the Patents Act 1977, the relevant intention is that of an ultimate or end user. Where a bespoke device is supplied to one identified end customer, the claimant must show that the customer has or will probably form the intention to put the invention into effect. The supplier’s knowledge or what would be obvious to a reasonable person is assessed in all the circumstances.
3. The evidence did not establish a realistic prospect of proving probable modification. The defendants gave undertakings, the identified customers denied any intention to modify the coupling, and the Ministry of Defence stated that it regarded the vehicle as compliant. The court made no determination on the underlying technical interpretation of the applicable requirements. A draft amendment served during the hearing was almost a year late, unsupported by pleaded facts and matters, and inconsistent with the evidence. Permission to amend was refused. Summary judgment would have been granted on the same issue if strike out had not been ordered.
4. Licence issue: The second claimant’s claim for the period from 20 May 2021 to 13 February 2023 was struck out. The alleged oral licence was not pleaded. The available evidence, including the claimants’ own earlier pleading, witness evidence and contemporaneous letter, positively contradicted the late assertion that such a licence had been granted. There was no realistic prospect that further investigation at trial would alter that conclusion.
5. The defendants’ strike-out applications succeeded on both issues.