Building Product Design Ltd v Sandtoft Roof Tiles Ltd
Reference:  FSR 40;  FSR 41
Court: Patents County Court
Judge: Judge Fysh QC
Date of judgment: 15 Apr 2004
Patents - Infringement - Abuse of Process - Measure of Damages - Res Judicata - Only one type of infringement pleaded - Second action brought on excluded types.
Instructing Solicitors: Martineau Johnson
The defendant applied to strike out a second claim by the claimant for infringement of its patent in respect of vent roof tiles. The patent had previously been found to be valid and infringed. In the first patent infringement action, BPD had asked the court to decide whether the inquiry as to damages should properly encompass all of Sandtoft’s ventilators which fell within the claims of the patent or only the specific infringing ventilators referred to in the judge’s restraining order, namely those made of clay rather than concrete. The court held that the order included clay half round ridge vent roof tiles but not angled tiles; therefore BPD brought a second claim in respect of the angled tiles.
Whether the additional cause of action proposed in respect of angled tiles was res judicata and an abuse of process.
Whether an abuse of process had arisen depended upon the circumstances of the case. The requirements of the CPR, Part 63 that each type of infringement had to be specifically pleaded in a patent infringement action recognised the importance of economy with regard to costs as well as in relation to the court’s resources, the implementation of public policy regarding the finality of litigation and practical good sense. The commencement of the second action for infringement of the patent was not just a procedural inconvenience; it amounted to an abuse of process. Proper pleading required the timely identification of every type of infringement alleged. By the end of the trial, and normally well before, a defendant ought to know what its position was and in the instant case this had not happened in relation to the angled roof tiles.
This is the first patent case to give guidance on the meaning of CPR 63.5 and Paragraph 2F-19 regarding Particulars of Infringements – see also Sorata v Gardex  RPC 317.