Patents: A P Racing Ltd v Alcon Components Ltd (#2)

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Jane Lambert

Court of Appeal (Lords Justices Lewison, Lindblom and Flaux) A P Racing Ltd v Alcon Components Ltd [2018] EWCA Civ 1420 (21 June 2018) 

This was an appeal by the claimant company, A P Racing Ltd ("AP"), against the decision of His Honour Judge Hacon in AP Racing Ltd v Alcon Components Ltd [2017] EWHC 248 (IPEC) (15 Feb 2017).  His Honour held that one of 7 disk brake calipers manufactured by Alcon Components Ltd ("Alcon") infringed UK patent no. GB 2,452,690 for a disc brake caliper body and a disc brake caliper comprising such a body but the other 6 did not. AP appealed against the finding of non-infringement in relation to 2 of Alcon's calipers, CAR 1249 and CAR 37.

The appeal came on before Lords Justices Lewison, Lindblom and Flaux and the lead judgment was delivered by Lord Justice Lewison.  His lordship did not mention in his judgment the precise grounds of appeal but it would appear that AP criticized Judge Hacon for not finding that a region of the allegedly infringing product corresponded to a feature of claim 1 of the patent.

The claim had 6 features one of which was that:

"each of the stiffening bands has a profile that is asymmetric about a lateral axis of the body when viewed in plan."

The problem for Judge Hacon was that the specification did not indicate clearly what was meant by those words.  In previous litigation  over the patent, it had been held that there must be some sort of perceptible distinction between stiffening bands and their limbs but the patent did not say what that was and neither could AP's counsel (as can be seen from para [15] of Lord Justice Lewison's judgment).  Judge Hacon had to do the bast he could with the materials before him and he made what Lord Justice Lewison called "a value judgment".

Lord Justice Lewison said at paragraph [33] that AP's case did "little more than disagree with the value judgment which the judge was expressly invited to make and did make."  Citing the Court of Appeal's judgment in Okotoks Ltd and another v Fine & Country Ltd and others [2013] EWCA Civ 672 (14 June 2013), the learned Lord Justice warned that "an appeal court must be especially cautious about interfering with value judgments of this kind."  His lordship added:

"Put another way, which parts of the impugned calipers amounted to a [peripheral stiffening band] was a question of fact, and an appeal court should not overturn a trial judge's findings of fact unless compelled to do so."

That was enough to dispose of the appeal but there was also a point of procedural fairness. Lord Justice Lewison said at paragraph [34]:

"As I have said, AP Racing produced a large number of drawings all differently coloured to show what it alleged was the extent of the PSB in the impugned calipers. The drawings served with the Particulars of Claim differed from those served with the Reply; and some of the drawings relied on by AP Racing's expert witness differed yet again. The drawings upon which [AP] now relies are contained in his skeleton argument for this appeal. They appear to me to differ yet again, as I think [AP's counsel] accepted. In other words, the appeal is proceeding upon drawings and allegations which were not relied on as part of AP Racing's pleaded case, and about which no evidence has been given. For good measure, the drawings in [AP's counsel's] skeleton argument present multiple variants, none of which was canvassed before the judge. As I have said before, the trial is not a dress rehearsal: it is the first and last night of the show: Fage UK Ltd v Chobani UK Ltd [2014] EWCA Civ 5, [2014] F.S.R. 29 at [114]."

He concluded at paragraph [35] that Alcon had "good grounds for complaint about the twists and turns that the allegations of infringement have taken."

This was particularly reprehensible in the Intellectual Property Enterprise Court where arguments as well as facts have to be pleaded (see paragraphs 2 (a) and (c) of the Intellectual Property Enterprise Court Guide).   Lord Justice Lewison explained at paragraph [37]:

"The function of the appeal court is not to try the case again, but to review the decision of the trial judge. To present an appeal court with a new case subverts that function. Where parties have agreed a list of issues (or are required by the rules to have done so) that is, in itself, a powerful reason for not permitting new arguments to be run for the first time on appeal."

For these reasons the Court dismissed AP's appeal.

This is a short judgment but it makes important points on the functions of appeals. First, appeal courts will intervene only to correct manifest errors, not review value judgments with which they may not agree.  Secondly, the case on appeal must be substantially the same as the one at trial. This was not the first time that the Court of Appeal has said such things and it might be said that AP was pushing its luck.

It may have been encouraged to do so by the spectacular success of a previous appeal   In AP Racing Ltd v Alcon Components Ltd [2013] EWPCC 3 (5 Feb 2013) His Honour Judge Birss QC as he then was dismissed a previous claim for patent infringement by AP against Alcon on the grounds that UK patent no. GB 2,452,690 (the same patent as in this case) was invalid for added matter. AP appealed successfully to the Court of Appeal in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 (28 Jan 2014) which restored the patent and ordered an inquiry as to damages.  In AP Racing Ltd v Alcon Components Ltd [2016] EWHC 116 (IPEC) (28 Jan 2016) Judge Hacon awarded damages of £494,564 to AP.  I blogged about the inquiry in Damages for Patent Infringement - AP Racing Ltd v Alcon Components Ltd 23 Feb 2016.

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