HP-2020-000016 - [2025] EWHC 1451 (Ch)

Cabo’s claim for unjustified patent threats is brought under s. 70 of the 1977 Act. The basic legal framework is not in issue in the present case. It is common ground that the relevant version of s. 70 is the version which applied before it was amended on 1 October 2017. That provided:

“(1)

Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of a patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may … bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

(2)

In any such proceedings the claimant or pursuer shall, subject to subsection (2A) below, be entitled to the relief claimed if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them.”

Section 70(2A) provided that a threat may be justified if the defendant proved that the acts in respect of which proceedings were threatened constitute or would (if done) constitute an infringement of a patent.

The relief that could be claimed under s. 70(3) was a declaration that the threats were unjustifiable, an injunction against the continuance of the threats, and damages in respect of any loss sustained by the threats.

If MGA’s conduct is found to constitute threats within the meaning of s. 70(1), MGA does not contend that those threats were justifiable under s. 70(2A). That is because although MGA filed an application on 6 April 2017 for a European patent entitled “Toy having multiple serial surprise reveals”, that application had not been published by May 2017, when the alleged threats were made. (The patent was granted on 19 June 2019, but subsequently revoked on 21 March 2023 following an opposition filed by Cabo.) MGA therefore accepts that Mr Larian’s claims in May 2017 to have a relevant patent for LOL Surprise were not accurate.

MGA does, however, dispute (i) that its conduct constituted threats of patent infringement proceedings in the UK; (ii) that Cabo was a “person aggrieved” by those threats; and (iii) that Cabo can claim either damages or declaratory relief if s. 70(1) threats are established. This section addresses the first two of those questions; the issue of relief is addressed further below.