Case No. IP-2018-000182

69.Both parties accepted that the Limitation Act 1980 does not apply to claims for specific performance, and nor can it apply by analogy: see P&O Nedlloyd BV v Arab Metals Co and Ors (No 2) [2006] EWCA Civ 1717. But both parties accepted that the defence of laches is available in claims of this nature: “The equitable doctrine of laches … provides the court with ample power to refuse relief when delay on the claimant’s part would make it inequitable to grant it and I should be surprised if there were many cases in which, in the absence of fraud, the court would be willing to grant relief by way of specific performance if the claim had not been made within six years after the contract was due to be performed” (P&O at paragraph 52). 70.Volumatic argued that the defence of laches could not apply on two grounds. First, it argued that if Volumatic was only entitled to demand assignment after performing 10 years of royalty payments, that hurdle has only been met recently and hence there is no delay. Second, Volumatic argued that, even if there was a delay, it had not been prejudicial to IFL: the parties had carried on in their commercial relationship, pursuing a consensual resolution to the ownership of the intellectual property, rather than taking the matter to court, in circumstances where there was no imperative to clarify the ownership position (citing Frawley v Neill [2000] CP Reports 20 and Patel and Ors v Shah and Ors [2005] EWCA Civ 157). 71.I reject Volumatic’s first argument. There has clearly been a substantial delay. I have found that the 10 years of royalties was not a condition precedent to assignment. Rather, the “mutual acknowledgment” required for Stage 2 of the Agreement to activate was completed (including on Volumatic’s pleaded case) in 2007/2008. These proceedings were commenced 10 years later. Even deducting a year for the without prejudice negotiations, there has been substantial delay. 72.In relation to prejudice, IFL submitted that it was not necessary, but, if it was, it relied on the same factors as set out above in paragraph 36. 73.I do not need to decide whether or not prejudice is required because I find it is present. As set out above, I do not accept that IFL has suffered prejudice as a result of Mr Bonné’s entrepreneurial puff statements. I also do not accept that IFL suffered prejudice as a result of improvements to the Pouch. Mr Williams was clear in his oral evidence that none of the improvements related to the invention disclosed in the patents, so, on the facts, this issue does not arise. But I do accept that IFL would suffer prejudice on the basis of its submissions, summarised in paragraphs 36 (a) and (d) above, which is, in my judgment, sufficient to establish laches.