IP-2023-000104 - [2024] EWHC 233 (IPEC)

It is frequently not appropriate to grant summary judgment in a patent case because the court must generally consider issues of claim construction and infringement through the eyes of the skilled person. That perception is not possible without the benefit of expert evidence at trial and cross-examination, see Nampak Plastics Europe Ltd v Alpla UK Ltd [2014] EWCA Civ 1293, at [4]-[6] and [9].

Issues arising under the doctrine of equivalents, including identification of the inventive concept, are also liable to require expert evidence, see Shenzhen Carku Technology Co, Ltd v The Noco Company [2020] EWHC 2104 (Pat), at [29] and [75].

However, where the words of the claim which are relevant to the issues of construction and/or infringement arising in a case are susceptible of interpretation according to their ordinary meaning, requiring no expert guidance, summary judgment may be appropriate, particularly where the technology is simple to understand, see Virgin Atlantic Airways Ltd v Delta Airways Inc [2011] EWCA Civ 162 at [13]-[14], cited in Nampak at [7].

A party which argues that the court cannot decide one or more relevant issues without expert evidence must provide sufficient reasons why that is. In Nampak Floyd LJ said at [11]:

“It follows from what I have said that, on a summary judgment application such as this, it is necessary for a party who claims that the court is inadequately equipped to decide an issue of construction to identify, perhaps in only quite general terms, the nature of the evidence of the common general knowledge which he proposes to adduce, and to be in a position to explain why that evidence might reasonably be expected to have an impact on the issue of construction. If that party is not able to do so, it is open to the court to conclude that he is simply hoping that ‘something may turn up’ and that his defence does not have the necessary ‘reality’ to avoid summary judgment under Part 24.”

Even in the absence of issues of construction and/or infringement which require expert evidence, the overall principle in an application for summary judgment applies just as much to patent cases as any other, including a simple patent case, namely that where reasonable grounds exist for believing that a fuller investigation into the facts of the case would add to or alter the evidence available and so affect the outcome of the case, summary judgment is not appropriate, see Nampak at [8], citing Khatri v Cooperative Central Raiffeisen-Boerenleenbank BA [2010] EWCA Civ 397 at [6].