An action was originally brought alleging infringement from a ‘vent tile’ which would be used in the ridge of a roof. What was pleaded was a clay half-round ridge vent tile; and this tile was the only infringement mentioned in the agreed order. BPD asked that three other tiles be included in the inquiry. Sandtoft objected. Sandtoft admitted selling such further tiles before the commencement of the action but argued that the pleadings and the agreed order being limited to the clay half-round ridge tiles only, there was no scope for these other tiles to be included in the enquiry. It was not disputed that the clay and concrete tiles were identical save as to their material.
Held: In a case management conference on the ‘clay v. concrete’ tile issue, the order could be corrected under the slip rule; and that the concrete half round ridge tiles could properly be regarded as falling within the scope of the inquiry as to damages. He dismissed BDP’s application to have the angled tiles included in the inquiry. BDP then brought a second action, claiming that the angled tiles infringed its patent. The court struck out the second action as an abuse of process: ‘I do not regard the commencement of this second action for infringement of the Patent as just a ‘procedural inconvenience’ to Sandtoft; it amounts to an abuse of process. Proper pleading requires the timely identification of every type of infringement alleged. And, on that understanding, a defendant should know by the end of the trial (and normally well before trial) where it stands. In relation to Sandtoft’s angled ridge tiles, that did not happen. This application succeeds and the second action will therefore be struck out.’ The ‘clay v. concrete’ issue involved a correction of the original order under the slip rule. It was the correction of a mistake in the original order. What they were made of was immaterial. By contrast, when the infringing product was a different product, the judge held that it should have been specifically pleaded.
Judges:
HH Judge Fysh QC
Citations:
[2004] FSR 41
Jurisdiction:
England and Wales
Cited by:
Cited – Ultraframe (UK) Ltd v Fielding and others ChD 27-Jul-2005
The parties had engaged in a bitter 95 day trial in which allegations of forgery, theft, false accounting, blackmail and arson. A company owning patents and other rights had become insolvent, and the real concern was the destination and ownership of . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, Litigation Practice
Updated: 01 July 2022; Ref: scu.230350
