AP Racing Ltd v Alcon Components Ltd
Decision date: 15 May 2015
Neutral citation: [2015] EWHC 1371 (IPEC)
Overall AI summary confidence: high
Short overview
This short overview is intended to summarise the case, issues and outcome so far as they are supported by the judgment.
AI confidence in this short overview: high
AP Racing sued Alcon for patent infringement and, after judgment on liability, issued a second action alleging infringement by seven additional Alcon calipers that had been publicly available before the first action. Alcon applied to strike those claims as an abuse of process; the court found AP Racing could probably have discovered the calipers earlier but that resolving them at the post‑liability inquiry would have been quick and not require additional evidence. The strike‑out application was dismissed and the court will invite submissions on appropriate procedural steps.
Ratio decidendi
This summary is intended to identify the ratio decidendi, meaning the legal reasons for deciding and the binding part of the decision.
AI confidence in this ratio decidendi summary: medium
Where additional alleged infringements could reasonably be resolved quickly and without the need for additional evidence at the post‑liability inquiry, pursuing a separate subsequent action in respect of those alleged infringements will not necessarily amount to an abuse of process; the patentee’s failure to discover the claims earlier is a relevant but not determinative factor, the decisive question being whether the second action amounts to unjust harassment or oppression in all the circumstances.
Obiter dicta
This summary is intended to identify obiter dicta, meaning observations made by the way that were not necessary to deciding the case and are not binding.
AI confidence in this obiter dicta summary: medium
The judge indicated (non‑bindingly) that a patentee in IPEC does not have an unfettered right to introduce further alleged infringements at an inquiry and that where additional evidence would be required, permission to add new alleged infringements will generally be allowed only in unusual circumstances. The judge also suggested CPR 63.23(2) is not an absolute bar to considering further infringements at inquiry if the patentee only became aware after the CMC and the court can fairly and proportionately determine the issue without extra evidence.