Insulet Corporation v Menarini Diagnostics Limited & Ors

For jurisdictional purposes, a serious issue to be tried must carry some degree of conviction. The claim must be coherently pleaded and properly particularised, with evidence establishing a sufficiently arguable factual basis. The court should avoid a mini-trial but may consider evidence reasonably expected to be available at trial.

Joint tortfeasorship by common design requires concerted action directed to a common end that includes the infringing acts, together with inter-related intentions understood by the parties to be shared. Procuring infringement requires knowledge of the essential features of the infringement and an act inducing, inciting or persuading the primary infringer. Communication is necessary for common design but is not an independent legal requirement for procurement.

Insulet alleged that EOFlow, a Korean manufacturer, was jointly liable with Menarini UK for infringement of the claimant’s UK patent concerning an insulin pump. Insulet relied on common design and procurement of Menarini UK’s alleged infringement.

Zacaroli J had granted permission to serve EOFlow out of the jurisdiction. EOFlow accepted that the jurisdictional gateway and England’s suitability as a forum were satisfied, but challenged whether there was a serious issue to be tried concerning joint tortfeasorship. The court considered draft amended pleadings relating to the 390 Patent. The central issue was whether the evidence disclosed a sufficiently arguable common design or procurement case.

1. The application was dismissed. EOFlow’s application to set aside the order granting permission to serve it out of the jurisdiction was refused. Permission to appeal was also refused.
2. For a serious issue to be tried, the claim must be more than merely arguable and must carry some degree of conviction. It must be coherently pleaded and properly particularised. Evidence must establish a factual basis supporting the allegations; pleading allegations which would establish a claim if true is insufficient. The court should not conduct a mini-trial or resolve ordinary factual conflicts, but may consider evidence reasonably expected to be available at trial.
3. For common-design joint tortfeasorship, Menarini UK had to have infringed the 390 Patent; EOFlow had to know the essential features making the acts infringing; EOFlow had to provide more than minimal or trivial assistance; and EOFlow’s assistance had to be performed pursuant to a common design with Menarini UK directed to a common end that included the infringing acts. Common design requires concerted action, not merely independent action towards a similar end or knowledge of consequences. Inter-related intentions, understood by each party to be shared, were required. Communication need not be express or verbal.
4. There was a realistic prospect of establishing common design. The exclusive distribution arrangement, volume commitments, consultation and feedback provisions, joint branding, contemporaneous descriptions of a close partnership, and the UK’s apparent importance supported inferences of coordinated manufacture, importation and sale. Contractual silence and the allocation of particular responsibilities did not conclusively negate common design at this stage.
5. Procurement required knowledge of the essential features of the infringement and an act inducing, inciting or persuading Menarini UK to infringe. Communication was not an essential legal requirement for procurement, although it would commonly be involved in practice. The comprehensive agreement, appointment of the distributor, joint branding and announcements provided a realistic basis for inferring the necessary inducement and communications.
6. The court therefore found a realistic prospect of success on both common design and procurement. It did not need to determine the alternative quia timet injunction case. The multifactorial assessment did not mean that every exclusive distribution arrangement would make a manufacturer a joint tortfeasor.

The judgment concerns EOFlow’s application to set aside an order of Zacaroli J dated 7 June 2023 granting permission to serve proceedings out of the jurisdiction. It is not itself an appellate judgment.