Issue 15 – Should IFL be ordered to grant Volumatic exclusive rights to use any know-how in respect of the Pouch?
82.Volumatic argued that the “objective intention” of the Agreement was to equip Volumatic with everything it needed to exploit the rights granted – and that the intellectual property would be useless to Volumatic without a right to use any know-how. Know-how, Mr Tilley reminded me, is not property, and hence cannot be “assigned”. But it is clear on the terms of the Agreement that such a clause is needed, he said, and that I should construe the Agreement to include such an exclusive right. 83.IFL submitted that such a claim is “simply wishful thinking” – there being no basis on which a reasonable person with the background knowledge of the parties would construe the Agreement as requiring IFL to transfer know-how to Volumatic. 84.I agree with IFL. The clear language of the Agreement refers only to “property”, and knowhow is not property. The property is to be “assigned” and Mr Tilley conceded that knowhow is not capable of assignment. In any event, any know-how was in the possession of DFL, not IFL, the party to the Agreement and the owner of the intellectual property. Further, any know-how on the production process (as opposed to the design process) actually sat with the people running the factories in China who manufacture the Pouch on behalf of DFL. 85.In my judgment, there is no basis at all for inferring such a construction, and I reject it.
- Mr David Stone (sitting as an Enterprise Judge):
- Volumatic
- Agreement
- Pouch
- List of Issues
- Witnesses
- Background
- Warwick Meeting
- Legal Principles
- Preliminary Point
- Issue 1(a) – Did the parties have an intention to create legal relations in relation to the Agreement (alternatively Stages 2 and 3 of the Agreement)?
- Issue 1(b) – Was the Agreement sufficiently certain for it to be legally binding?
- Issue 2 – Is Volumatic estopped by convention from asserting that the Agreement (alternatively stages 2 and 3 of the Agreement) is binding?
- Issue 3 – Was the Agreement varied?
- Issue 4 – On a proper construction of the Agreement, have the conditions for assignment been satisfied?
- Issue 5 – If the conditions precedent were satisfied, did Volumatic satisfy them within a reasonable time?
- Issue 6(a) – Has Volumatic come to court with clean hands by reason of it allegedly conducting its relationship with IFL as if the Agreement were not binding on it?
- Issue 6(b) – Has Volumatic come to court with unclean hands by reason of its alleged precontractual misrepresentations?
- Issue 6(c) – Has Volumatic has come to court with unclean hands by reason of its failure to comply with its own obligations under the Agreement (including whether IFL acquiesced to the same and/or whether IFL is estopped from asserting otherwise)
- Issue 8 – Does IFL have a defence of laches?
- Issue 10 – Should the court refuse specific performance on the discretionary grounds that: (a) IFL has allegedly conducted itself on the basis that Stages 2 and 3 of the Agreement were not binding; (b) IFL has improved the Pouch at the request of Volumatic; (c) Volumatic has allegedly not complied with its own obligations under the Agreement; and/or (d) delay
- Issue 7 – Would it be inequitable to order specific performance?
- Issue 12 – Should the court order specific performance of the Agreement?
- Issue 11 – Does IFL hold the intellectual property rights in the Pouch on trust for Volumatic?
- Issue 13 – Should the Court order damages in lieu of specific performance?
- Issue 9 – Is the claim for damages statute barred?
- Issue 15 – Should IFL be ordered to grant Volumatic exclusive rights to use any know-how in respect of the Pouch?
- Conclusions