An Interim Injunction in Reverse - Fiberweb Geosynthetics Ltd v Geofabrics Ltd

Author Jules Gagnage Licence CC BY-SA 3.0 Source Wikimedia Commons

Jane Lambert

Patents Court (Sir Anthony Mann) Fiberweb Geosynthetics Ltd v Geofabrics Ltd [2021] EWHC 1996 (Pat) (16 July 2021)

Everyone is familiar with interim injunctions.  These are orders to do or, more likely, refrain from doing something until trial or further order.  They are intended to protect an intellectual property or other rights owner from irreparable harm between the issue of proceedings and trial.  They are awarded in exchange for a promise by the person seeking the injunction to pay damages to the injuncted party should the court subsequently decide that the injunction should never have been granted.

But what about the opposite case where a party that is already subject to an injunction wants to make or sell a product that may or may not infringe an intellectual property right for which a final injunction has been granted and thus breach such injunction pending the trial of its action for a declaration that the product does not infringe?  If that party supplies that product it risks contempt proceedings because the court may refuse to grant the declaration.  The safer course is to wait until trial but that can be just as injurious to the restrained party as a refusal to award an interim injunction can be to an intellectual property rights owner.

Such a situation arose in Fiberweb Geosynthetics Ltd v Geofabrics Ltd [2021] EWHC 1996 (Pat).  Fiberweb Geosynthetics Ltd. ("Fiberweb"), had lost a patent claim brought by Geofabrics Ltd, ("Geofabrics").  I discussed the trial in Patents - Geofabrics Ltd v Fiberweb Geosynthetics Ltd on 12 March 2020 and Fiberweb's appeal in Patents - The Appeal in Geofabrics v Fiberweb Geosynthetics on 20 June 2021.  After the appeal, Fiberweb was ordered not to infringe Geofabrics's patent.  Fiberweb developed a product that it believed would not infringe Geofabrics's patent and sought a declaration to that effect under s.71 of the Patents Act 1977.  Its claim will be tried early in the New Year.  Fiberweb wanted to sell its new product before the trial but did not wish to risk contempt proceedings.  It, therefore, applied to Sir Anthony Mann for what was in effect an interim injunction in reverse.  In other words, an order that it would not be guilty of contempt should its declaration of non-infringement claim be unsuccessful.

Fiverweb relied on the following grounds:

• CPR 3.1 (2) (f) which provides:  "Except where these Rules provide otherwise, the court may … (f) stay the whole or part of any proceedings or judgment either generally or until a specified date or event."' 
• CPR 40.8A:
"Without prejudice to rule 83.7 (1), a party against whom a judgment has been given or an order made may apply to the court for—
(a) a stay of execution of the judgment or order; or
(b) other relief,
on the ground of matters which have occurred since the date of the judgment or order, and the court may by order grant such relief, and on such terms, as it thinks just."
• The court's power to grant declarations under s.19 of the Senior Courts Act 1981 and CPR 25.1 and 40.20;
• (d) CPR 3.1 (7) which provides:
"A power of the court under these Rules to make an order includes a power to vary or revoke the order."; and
• The inherent jurisdiction of the court.

Geofabrics accepted that the court had jurisdiction to vary or revoke its orders but argued that the circumstances in which it would do so were very limited.   It referred to Mr Justice Patten's judgment in Lloyds Investment (Scandinavia) Ltd v Ager-Hanssen [2003] EWHC 1740 (Ch) and the Court of Appeal's in Tibbles v SIG plc [2012] 1 WLR 2591 which appeared to impose restrictions on the exercise of that jurisdiction.  It contended that Fiberweb could not bring itself within any of the circumstances in which an order may be varied or revoked.

Sir Anthony rejected Fiberweb's claim for an interim declaration at para [13] of his judgment but thought that the other grounds might apply.  In his view, Tibbles and the cases mentioned in it did not restrict the exercise of his discretion. The restrictions in those cases dealt with litigants' attempts to revisit issues that had already been addressed or, if not addressed, were still naturally the subject of the proceedings and would have fallen for decision.  That was not the issue in the present case  That issue was whether the manufacture and distribution of a product that Fiberweb had developed after the previous litigation would infringe Geofabrics's patent and thus breach the injunction.  Tibbles might have applied had the parties considered whether the injunction in the previous litigation would catch Fiberweb's new product but that was not the case,

There appeared to be no authority directly on point but Fiberweb could point to Mr Justice Arnold's decision in Illumina v TDL Generics [2019] EWHC 2405 (Pat) to exclude the use of a specified process from the scope of an injunction to restrain the infringement of a patent while it remained uncertain whether that process would infringe. The circumstances were slightly different from those in the case before Sir Anthony because the claimant had indicated that it would not bring committal proceedings for the use of the process until it was known whether the process would infringe.  A similar carve-out had been ordered by Mr Justice Jacob in Unilever v Chefaro [1994] RPC 567.

At para [32] his lordship said that as questions of finality were not engaged, the question fell to be decided on the basis of the overriding objective and what the balance of justice required.  He added at [38] that if no injunction were in place at the moment and were Geofabrics to be positively seeking one, Geofabrics's application would fail because it was not prepared to give a cross-undertaking in damages.  That refusal was not in evidence but Geofabrics's counsel had made his client's position clear in response to a direct question from the judge.  Grofabrics had argued that Fiberweb's likely damages would be less than that company had alleged and that the injunction in the previous proceedings would not affect research and development work.  Sir Anthony agreed but concluded that there was still potential for significant damage to Fiberweb if it won a declaration of non-infringement but could not exploit the new product or seek damages in lieu.  If an interim injunction application were a true parallel then the only answer would be a carve-out pending the action for the declaration.

The judge asked himself whether there were any factors that made an interim injunction application an inappropriate parallel to apply.   There were differences but the underlying point was the same.  Geofabrics was seeking to maintain a restriction to which it might not be entitled.   The balance of justice required the final injunction to be qualified to achieve the result that any exploitation of the new product between the application and the determination of the declaration of non-infringement proceedings should not be treated as a breach of the injunction.  Sir Anthony thought that the best way of achieving that result would be by making an order in the original proceedings rather than the declaration of non-infringement proceedings in which the application had been brought.

Although this is the first time this situation has arisen it is unlikely to be the last.  I shall therefore mention this case in my talk on IP Litigation in the English Courts between 14:10 and 15:00 at the Cambridge IP Law Winter School. 

Anyone wishing to discuss this article may call me on 020 7404 5252 during office hours or send me a message through my contact form.