Cintec International Ltd v John Humphries Parkes (t/a Dell Explosives) & Anor

In this action, the claimant is Cintec International Limited (“Cintec”). It is a company incorporated under the laws of England and Wales, having its head office in Newport. For about twenty years it has been engaged in the business of designing, manufacturing and selling structural repair and reinforcement systems for buildings. It has designed, produced and sold a number of products for the protection and strengthening of buildings against blasts.

About three years ago, it decided to expand its range of products. To that end, it developed what it calls its Waterwall range of products. As will be explained in greater detail below, these essentially consist of large bags which can be placed near something which is likely to explode, such as demolition charges used to bring down obsolete buildings, unexploded ordnance and terrorist bombs are then filled with water. In that state they can absorb or disburse a large part of the energy generated if there is an explosion. It is Cintec’s entry into this field which has led to this litigation.

There are two defendants. The first, Mr. John Humphries Parkes, is an inventor who has put a great deal of effort into developing products and methods of mitigating the effects of explosions by the use of containers filled with water. He has a considerable number of patents to his name. He trades as Dell Explosives. The second defendant is Mr. Martin Frost. He describes himself as a businessman and publisher. As he explained to Jacob J, at an interlocutory stage in these proceedings, although Mr Frost has no legal qualifications or training, he has extensive experience as a litigant in person, having appeared and argued cases before various Scottish courts on a large number of occasions. He not only represented himself before me but, in effect, acted as Mr. Parkes’ advocate as well. He is also described as a partner of Mr. Parkes. Both defendants live in Scotland.

Cintec conducted its first tests on the embryonic Waterwall technology in mid 2001. It subsequently conducted demonstrations of its designs at the Explo-World 2002 meeting on Salisbury Plain. A third party there suggested that Cintec should contact Mr. Parkes, who is well-known in this field, to see if there were areas in which they could co-operate. Mr. Ward of Cintec contacted Mr. Parkes, but nothing came of it. Cintec continued to develop its potential product line. In fact, samples of one product, called the Navy Blast Mitigation Bag were supplied to the Royal Navy in January of this year and were taken aboard HMS Ark Royal to the Gulf. As of the date of this trial, they are still on that vessel.

In March of this year, samples of another product, called the Blast Bin, were tested with a company called Quinetiq Plc. This is the privatized embodiment of what used to be known as the Defence Evaluation and Research Agency (“DERA”) part of the Ministry of Defence. On 13th June this year, Mr. Ward had a conversation with Mr. Parkes. The details of that conversation are not relevant to the issues here. It is sufficient to note that both sides agree that the subject of Mr. Parkes’ patents was mentioned. On 18th June, there was a meeting between Mr. James and Mr. Ward of Cintec, and Mr. Parkes and Mr. Halliday. Again, the details of that meeting are not relevant, save that it is agreed that the subject of Mr. Parkes’ patents was raised again. On 20th June, Mr. Parkes’ then patent agents JY & GW Johnson, sent a letter to Cintec. It recorded that Mr. Parkes had drawn a number of his UK and US patents to its attention during the 18th June meeting. It made no further comment regarding Mr. Parkes’ patents but went on to ask for a copy of Cintec’s own patent application covering its Waterwall products. The latter document was unpublished at that time.

On 23rd June, and apparently without warning, Mr. Parkes sent Mr. James of Cintec a letter in firm terms. It is not in dispute that it was drafted in substance by Mr. Frost. Cintec believe it to constitute a threat within the scope of section 70 of the Patents Act 1977. The letter was replied to by Cintec’s patent agents, Wynne-Jones Lainé & James. They said, in summary (1) that Mr. Parkes’ letter seemed to be inconsistent with the agreement reached by the parties at the 18th June meeting that each party would consult its patent agents about whether there had been any infringement of Mr. Parkes’ patents, (2) that it was important for Cintec to consult its agents since Mr. Parkes had failed to identify which of his patents were said to be infringed and (3) that the letter of 23rd June was an actionable threat; and that an undertaking not to threaten Cintec’s customer base or any third party was required by return. Wynne-Jones’ letter went on to refer to the CPR and said in particular:

“[The CPR] includes a general requirement before litigation commences to set out in detail the cause for complaint and allow the intended defendant an opportunity to answer the complaint, the failure to follow which protocol then being considered by the Court in any subsequent litigation when considering matters such as reimbursement of legal fees, whether or not the litigation is otherwise successful. In that regard, noticeably lacking from your letter is any explanation as to which patents are deemed to be infringed and in what way, so that it is impossible for our client to justify paying you anything by way of compensation or even entering into any discussions to formulate an agreement within the timeframe you propose, or at all. May we therefore suggest that you arrange for your former patent attorneys or current advisers (if any) to set out your case in detail with reference to particular claims of particular patents, as indeed our client was expecting to receive following the meeting with you. If it subsequently transpires that we are able to advise our client that one or several of the patents are being infringed by their current activity our client will be willing to consider accepting your offer subject to certain safeguards, including a warranty that the patents are valid and do not infringe prior rights of third parties, such as the owners of patents and patent applications cited against your patent applications during their pendency.

We look forward to receiving, by return, the assurances sought with regard to the issuing of threats to third parties and, thereafter, a detailed analysis of what patent rights you own, which patents are currently being infringed by our client, and, how with specific reference to the Waterwall product. In the event that our client does not receive the requested assurance we have instructions to initiate proceedings, and we therefore trust that you will take this opportunity to resolve matters amicably.”

It appears that Mr. Frost subsequently telephoned Mr. Halstead, a partner in Wynne-Jones Lainé & James, and gave an assurance that “no precipitous action would be taken”. This was followed up by Mr. Frost sending Mr. Halstead, indirectly, an e-mail in the following terms.

“Dear Mr. Halstead,

Re Cintec International Limited.

In terms of John Parkes’ intellectual property rights; UK and USA patents, your client has infringed a great number of rights.

For example:

Your client has infringed claim 12 of patent number 2,289,750.

Your client has infringed claim 1 of patent number 2,335,259.

However, before progressing over a great number of items and matters could you please explain your exact position and how long you have acted for Cintec International Limited. Furthermore, please advise if, when, type of, and the details of any patent professed by Cintec International Limited as such details are sadly lacking.

Finally, I confirm my verbal undertaking given to you on Wednesday afternoon.

Yours sincerely.”

Whatever the scope of the assurances given by Mr. Frost on 4th July, Mr. Parkes wrote to the chairman of a company called Transco Plc which operates a testing facility. Cintec did not receive a copy of this letter until 20th August of this year, after this action had commenced. That letter was also copied to the range superintendent of Transco. He is the person responsible for managing the location where explosive testing is carried out. The text of those letters will be set out and considered below. Cintec say that they amount to threats.

On Monday, 7th July, Mr. James had a telephone conversation with Mr. Neil Sparshot of Quinetiq. The latter described allegations of patent infringement which Mr. Parkes allegedly made to Quinetiq in relation to Cintec’s products. Once again, the nature of Mr. Parkes’ communication with Quinetiq will be considered below. For present purposes, it is sufficient to note that Cintec allege that threats were made to that company as well.

In the meantime, and notwithstanding Mr. Frost’s assurances referred to above, Mr. Parkes and Mr. Frost commenced proceedings against Cintec in the Scottish courts. It appears that Mr. Parkes and Mr. Frost had commenced the proceedings on 1st July and actually obtained permission to issue the proceedings from the Lord Ordinary (Lord Bonomy) on 3rd July. The relief sought in those proceedings is very wide indeed including, in effect, an interdict to prevent Cintec apparently in perpetuity from being involved in, or having an interest in, any business supplying water suppression technology for reducing the harmful effects of explosives. Apparently that relief is not dependent on the existence or ownership of any intellectual property rights. Furthermore, and of more direct impact on this trial, Mr. Parkes and Mr. Frost also seek an interdict to restrain Cintec from infringing nine United Kingdom patents and two United States patents. A monetary claim in the sum of £25 million is also made.

As I have said, the Lord Ordinary granted Mr. Parkes and Mr. Frost permission to proceed. On 8th July, a process server served the Scottish documents on Cintec. Apparently Cintec must enter an appearance within three days of the date on which Mr. Parkes’ and Mr. Frost’s summons “calls in court”. I am told that the latter event cannot take place until the action has been lodged for calling. Mr. Parkes and Mr. Frost have a year and one day to take that step. Notwithstanding the fact that they sought, unsuccessfully, interlocutory relief in Scotland, as of now, nearly three months later, they have failed to take this step. According to Mr. Howe, this has hindered his client. He points out that it is not the case, and has never been suggested, even in Mr. Parkes’ and Mr. Frost’s Scottish pleadings, that Cintec has done anything in relation to its Waterwall products within the jurisdiction of the Scottish courts, nor is it a Scottish corporation. There is nothing before me to suggest that these facts were drawn to the attention of the Lord Ordinary. In any event, Mr. Howe indicates that his client will apply to strike out the Scottish proceedings if and when it is lodged for calling. It is not for me to second-guess what the outcome will be of any such application.

On next day, 9th July, the present proceedings commenced with an application without notice for relief to restrain threats. That application came before me and was successful. The matter returned to court on 17th July, before Jacob J. The defendants were present in court. Mr. Frost argued that in view of the existence of the Scottish infringement proceedings, the Patents Court had no jurisdiction to hear this threats action. Jacob J indicated firmly that he considered that argument to be without merit. In the end, undertakings, in substantially the same terms as the injunction granted by me, were offered by the defendants.

Mr. Howe argued that the alleged threats had effectively prevented his client from further commercializing its products. In the light of that, the judge ordered a speedy trial, hence the fact that this trial has come on for hearing towards the end of September. The judge also counselled the defendants to seek legal representation. Unfortunately, they have not done so before me. As I have said, Mr. Frost acted as the defendants’ advocate.

The defendants have put in defences and counterclaim for infringement of three patents - UK patent GB 2289750 (“ ‘750”), UK patent GB 2335259 (“ ‘259”), and UK patent GB 2337805 (“ ‘805”). These are three of the patents which are also the subject of the nascent Scottish proceedings. By notice dated 26th August of this year, the defendants admitted that none of the other six United Kingdom patents referred to in the Scottish proceedings were infringed. Once again, there is nothing before me which suggests that the Lord Ordinary was informed of that.

Notwithstanding the above admissions, on the first day of this trial, the defendants sought leave to amend their counterclaim to include an allegation of infringement of one of the patents they had originally admitted was not infringed, namely UK patent GB 2314614 (“ ‘614”), which is a divisional of the ‘259 patent. Since Cintec had had to consider the question of infringement of all nine patents at a stage when it was unclear what patents the defendants would rely upon in this jurisdiction, and had dealt with them all in their pleadings, they did not object to the amendment.

Thus, this is a threats action in which one of the defences raised is justification. There is also a counterclaim for infringement of four United Kingdom patents. Cintec have not challenged the validity of those patents, although it has relied on certain prior art as an aid to construction of the claims in issue.

When the trial commenced, a number of preliminary issues needed to be dealt with. Mr. Frost argued that I should stand down from hearing the trial because I had been a member of the chambers in which Mr. Howe practices, that the court should decline jurisdiction in the light of the existence of the nascent Scottish proceedings and that there should be a general adjournment of the trial. A number of other points were raised. They were all considered and dealt with at the beginning of the hearing. In particular, I declined to stand down and dismissed the application relating to jurisdiction and for a delay.

Only two groups of issues need to be determined, namely whether threats have been made and whether the claimant’s products are infringements. The scope of these disputes is very limited indeed. That did not prevent both sides from putting in evidence which contained much irrelevant material. Furthermore, during the trial there was a frequent need to bring the parties back to the matters in issue.

I will consider first the question of threats. The relevant law is well established. Section 70 of the Patents Act 1977 provides:

“(1)

Where a person (whether or not the proprietor of, or entitled to any right in, a patent) by circulars, advertisements or otherwise threatens another person with proceedings for any infringement of the patent, a person aggrieved by the threats (whether or not he is the person to whom the threats are made) may, subject to subsection (4) below, bring proceedings in the court against the person making the threats, claiming any relief mentioned in subsection (3) below.

(2)

In any such proceedings the plaintiff or pursuer shall, if he proves that the threats were so made and satisfies the court that he is a person aggrieved by them, be entitled to the relief claimed unless –

(a)

the defendant or defender proves that the acts in respect of which proceedings were threatened constitute or, if done, would constitute an infringement of a patent; and

(b)

the patent alleged to be infringed is not shown by the plaintiff or pursuer to be invalid in a relevant respect.”

Under well-settled law, a threat is made if a statement, written or oral, is made to another which would convey to a reasonable recipient that proceedings for infringement of one or more patents will be commenced against a particular person or in respect of a particular product. There is no need for expressly threatening words to be used. In deciding whether a threat has been made, the court must take into account all the circumstances so as to put itself in the position of the reasonable recipient. In addition, as subsection (1) makes clear, an actionable threat against one person can be made in a statement to another.

The two major defences to a threats action consist of showing that the complainant has failed to prove that a threat was made and proving “justification”, that is to say that the activities which are the subject of the threat are or would be infringements of the patent in respect of which the threat was made.

There is one other provision which I should mention, namely section 70(4), which provides:

“Proceedings may not be brought under this section for a threat to bring proceedings for an infringement alleged to consist of making or importing a product for disposal or of using a process”.

As the Court of Appeal pointed out in Cavity Trays Ltd. v. RMC Panels Products Ltd. [1996] RPC 361, this exclusion is of limited scope. Whatever the legislative intention, it does not give rise to a general entitlement to threaten manufacturers or importers or users. In particular, if a trader both manufactures and sells products and a patentee threatens him with infringement proceedings in respect of both activities, section 70(3) provides a statutory defence in relation to the threats directed at the acts of manufacture, but not in relation to threats directed at acts of selling.

There is one other general point to be made. In all cases the court has to determine in all the circumstances not only whether a threat was made but also its extent. Thus, if a party owns or claims to own more than one patent and he makes threats, it is a question of fact whether the threat was made under one or more, and, if the latter, which of the patents.

It will be appreciated that a major plank of the defences here is justification. First, however, it is necessary to consider whether threats were made. The first complaint raised by the claimant concerns the letter to it of 23rd June 2003. There is no dispute that this was sent by Mr. Parkes, but was drafted by Mr. Frost. The context in which this was written was that the parties had had their meeting on 18th June, which, by all accounts, was amicable. During that meeting Mr. Parkes indicated that he owned intellectual property rights, including a number of patents, although he did not descend to giving details of which patents they were. The question of patents, both identifying which ones Mr. Parkes was concerned about and whether any of those, and if so which, were of relevance to Cintec’s products, was a matter to be left to the parties’ respective patent agents. The letter, which came without any warning and without the patent agents being given any chance to discuss the issues, as had been agreed, is in the following terms.

“Dear Mr. James,

Thank you for your hospitality on Wednesday the 18th June 2002. Not only was I impressed by your business set-up but by your obvious business integrity.

I accept that you may have breached my intellectual property rights in error as opposed to design. That said, on account of a foreseeable mutual profitable business relationship, I am prepared to allow you to ameliorate this breach upon the conditions below.

It is not in dispute that the reference to intellectual property rights was intended to cover, would be and were understood as covering all of Mr. Parkes’ patents. In my view, that includes all nine of the UK patents now identified in the Scottish proceedings. It appears to me that it is also clear, for example, from the second and last paragraphs that the defendants were alleging that the claimants were infringing those patents. Mr. Howe argues that the last paragraph is a clear threat. Mr. Frost said it was not. He said that the whole letter should be regarded as an offer to negotiate and was to be treated as privileged.

It appears to me that if this letter were to be treated as without prejudice, then it might well be that it would not be open to Cintec to rely on it. See Unilever plc v Procter & Gamble Company [2000] RPC 344. However, I do not think it is possible to regard this as part of without prejudice negotiations. Mr. Parkes and Mr. Frost chose not to follow the route of negotiation which would have allowed their patent agents to discuss these issues with Cintec’s agents. Instead, they simply made a demand for payment and entering into a licence at the shortest possible notice under threat of immediate proceedings. The Unilever defence does not apply here. I accept Mr. Howe’s submission.

In addition, it appears to me that this is a threat to sue Cintec and its directors under all nine of Mr. Parkes’ patents, including the five which it is admitted are not infringed. In respect of the latter patents, there is no defence of justification or any other defence.

Finally, I should mention that it is not suggested that the defence provided under section 70(3) applies in this case. In view of the contents of the paragraph numbered (2) in the letter, any such suggestion would have failed. The activities of which the defendants were complaining and in relation to which threats were being made included sales by Cintec of its product line.

The second pleaded threat consists a letter drafted and sent by Mr. Parkes to the chairman of Transco. As I have said, that is a company which ran test and demonstration facilities. Cintec was intending to demonstrate its Waterwall products at Transco’s premises. The letter was sent on 4th July. It reads as follows.

“POTENTIAL HAZARDS FROM THE USE OF DISPUTED IPR.

Dear Sir John,

It gives me no pleasure to write you in this manner but I do so;

(i)

in the interest of public safety, “

(ii)

to protect my Intellectual Property and

(iii)

to preclude the possibility of any future litigation against Transco in the UK or the USA.

If I may explain.

I have been working on the water suppression of explosives effects since 1993 and I hold several UK and USA patents in the field not to mention a wealth of intellectual property. My scientific advisor is Professor Steven Salter of Edinburgh University.

A recent meeting with Cintec’s directors at their headquarters in Newport Wales failed to resolve issues of Patents and Intellectual Property infringements.

During this meeting I was informed by Cintec that they had scheduled a trial of their explosion suppression products at your Spadeadam test facility in Cumbria.

While my technology is sound, proven and currently in service with HM Forces, deviations from my teachings will present serious hazards to life and infrastructures.

As of the 3rd July 2003 I secured a High Court summons against Cintec suing for Twenty Five Million Pounds Sterling.

Yours faithfully,

John Parkes.

CC. TRANSCO Range Superintendent Spadeadam.”

Mr. Parkes told me that the reference to “future litigation against Transco in the UK and USA” was intended by him to be a friendly warning to the company that if it became involved with the Cintec products and they proved to be defective, Transco could be the subject of product liability litigation.

It is not necessary for me to resolve the question of whether that was, in reality, Mr. Parkes’ intention. In my view it is not the message which would be conveyed to the reasonable reader. The whole tone of the letter is set by its title. “POTENTIAL HAZARDS FROM THE USE OF DISPUTED IPR”. The reference to litigation in the UK and USA reads naturally on to the next paragraph which points out that Mr. Parkes has patents in those two countries. The nature of the warning to Transco is reinforced by the next paragraph which refers only to patents and intellectual property infringement. Furthermore, it is difficult to see how this letter could reasonably be read as warning Transco of the possibility of product liability actions. Transco runs a testing facility. It would not be involved in selling Cintec’s products.

In my view this is a clear threat of patent infringement proceedings directed at Transco. It relates to Cintec’s products. Cintec is aggrieved by it. As with the earlier letter to Cintec, the threat is in respect of all Mr. Parkes’ patents, including those five, which it is admitted are not infringed.

I should mention one unusual defence raised by Mr. Frost. He attempted in a number of ways and at different times to depict this action and the interlocutory orders made in it as an attempt by the English courts to overrule or seize power away from the Scottish courts, and that he and Mr. Parkes were caught in the middle of a struggle for dominance. As part of that, he argued that the letter to Transco was sent in compliance with an order of the Lord Ordinary made on 3rd July. There is no such order which has been drawn to my attention. On further pressing Mr. Frost on this issue, he said that the Lord Ordinary, and I quote, “authorised us that we contact all parties who could be endangered by the products in question”. I have been supplied with no transcript of what the Lord Ordinary said, nor within any contemporaneous notes, but, assuming Mr. Frost is right, it is quite clear that the Lord Ordinary did not expressly or impliedly authorise the defendants to make patent threats. At the most he authorised them to communicate safety concerns to third parties. I say nothing about whether that would provide Mr. Parkes and Mr. Frost with a defence to a claim for trade libel.

This leads me to the third threat relied on. It is pleaded as follows in the amended particulars of claim.

“(f)

On the morning of 7 July 2003, the Claimant received a telephone call from Neil Sparshot of Qinetiq plc (the privatised incarnation of DERA), one of the Claimant’s customers. In that call Qinetiq indicated that they would not be conducting any further business with the Claimant until the Claimant’s dispute with the First Defendant was resolved. Since Qinetiq had not been informed by the Claimant about any such dispute, it is reasonable to infer that they were contacted by one of the Defendants or by an agent of theirs. The Claimant is at present unaware of what may have been said to Qinetiq by or on behalf of the Defendants. Nevertheless, Qinetiq’s behaviour is fully consistent with it having been threatened with patent infringement proceedings”.

This is of particular importance because, according to Cintec’s unchallenged evidence, it was just on the point of entering into a potentially lucrative contract involving Quinetiq when these alleged threats were made and that, because of them, that has now been put on hold.

It will be appreciated from the pleading that Cintec does not know precisely what was said to Quinetiq. As Mr. Howe explained, it was not a commercially acceptable course for his client to subpoena it potential business partner. In the end, however, this has not proved a problem because the evidence makes clear the flavour, tone and underlying message of what was said to Quinetiq. First, I can refer to Mr. Parkes’ own witness statement in which he says:

“4.

Over the last year while speaking with Angus Williams of Quinetiq vis-a-vis our SMSS (Small Munitions Suppression Systems) and some impending trials, Angus Williams told me that Cintec were also looking at producing a water-based system for the same purpose and we should perhaps talk to one another.

5.

Somewhat annoyed upon hearing this news, I told Angus Williams that I had already spoken with Mr. Steve Ward about our IPR and they (Cintec) never even had the courtesy to come back to me. Furthermore I said that it was not my place to ‘dangle my braces’ in front of Cintec as (a) I had many patents in the respective field, (b) had already alerted Mr. Ward to the fact and (c) that if Cintec continued breaching my IPR the matter would end up in a court of law”.

The impending trial referred to in the first paragraph were trials to be carried out on 24th and 26th March at Shoeburyness, so this is a reference to a conversation made before that date. Mr. Parkes confirmed this evidence in the witness-box. He also agreed that he would have made his points firmly. I have little doubt that he did. It was apparent throughout this trial that he feels very passionately about this field of technology and the part he has played in its development.

In my view there is no other way to treat this evidence than as a threat made to Quinetiq to sue Cintec. Once again, it is unparticularized and would be understood to mean that all Mr. Parkes’ intellectual property rights, including all nine UK patents, would be used against Cintec.

The other piece of evidence which I should refer to is contained in the witness statement of Mr James, managing director of Cintec. At paragraph 22 he says:

“On Monday 7 July I had a telephone conversation with Neil Sparshot of Qinetiq. He advised me that Mr. Parkes had been in contact with personnel at Qinetiq and advised them that Cintec’s Waterwall was in breach of his patent. Neil Sparshot told me that he could not enter into any business arrangement with Cintec until this issue had been resolved, because this was his companies policy. In the event that a contract could have been put in place I am of the view that Cintec would have earned in the region of £1 million in sales”.

Mr. Parkes was cross-examined about this. He said he did not know Mr. Sparshot, but he admitted that he had telephoned Quinetiq in July to tell them about the commencement of the Scottish patent infringement proceedings. He told me that he would have told Quinetiq that it was his view that Cintec’s products infringed his patents. There is no suggestion that Mr. Parkes threatened to sue Quinetiq. Furthermore, there is nothing to suggest that in this conversation he threatened to sue Cintec in England.

I cannot see how it can be an actionable threat to disclose that patent infringement proceedings have been commenced unless a threat to expand the litigation is made. No such thing was done here. This complaint in relation to this conversation fails accordingly, but succeeds in relation to the conversation recorded in Mr. Parkes’ witness statement referred to above.

For the reasons set out above, I have come to the conclusion that all, save the last complaint, have been made out. Furthermore, in so far as the threats include threats to sue in respect of patents which are admitted not to be infringed, there is no defence of justification and Cintec is entitled to relief.

This leads to the second major group of issues, namely justification and infringement. Before considering the patents individually, I should remind the parties, and in particular Mr. Parkes and Mr. Frost, of what is in issue.

The scope of the patent is to be determined by reference to its claims. There is no such thing as infringing the equity of a patent. It is necessary to construe the claims so as to determine what the patentee has set out as the monopoly he seeks. The question of infringement is then determined by applying to the relevant claims the Protocol on Interpretation to determine whether a particular product or process falls within the scope of the monopoly.

As I have already mentioned, Cintec has taken the course of not challenging the validity of the patents. It believes there is no need to do so. On the other hand, a very limited amount of prior art was relied upon to show that this is not a case in which it would be appropriate to give a wide interpretation to the claims because to do so would clearly make them cover well-known prior art. In addition to this, Mr. Howe insisted on relying on the prosecution history of these patents to show that limiting words were deliberately inserted in the claim so as to avoid the prior art. Mr. Howe accepted that there is no question of file wrapper estoppel arising under our law. On the other hand, he said that the prosecution history was admissible on construction and could give rise to admissions against interest.

In my view, absent file wrapper estoppel, this material is valueless. Even if admissible it has no weight.

Against this background, I turn to consider the Cintec products. Subject to one point which I will deal with at the end of this judgment, four products are in issue. They are the Bomb Bin, Blast Bin, Navy Blast Mitigation Bag and Waterwall. All are made up of plastic “bags” which are filled with water under pressure. When filled properly the bags become taut, like a water-filled balloon. The individual bags are made of a plastic fabric called dropstitch fabric. The precise design of this material will be considered below.

The Bomb Bin is illustrated in a document to be found in file D, tab 30, at page 40. It consists of a unit made up of four water-filled bags fitted at right angles to each other to form a substantially square enclosure to be placed around an explosive device, such as a bomb. The Blast Bin is illustrated on the same page. It is made up of four water-filled bags connected to each other at right angles. The device is placed over the explosive device with one bag, which is connected along its edges to the three others, acting as a “roof” and the three other bags acting as legs, so that the device looks in use somewhat like a key-hole desk. The Navy Blast Mitigation Bag is a large rectangular device whose length and width are much greater than its thickness. When inflated with water, it looks rather like a large mattress. It is designed to stand on one of its narrow sides to produce a large flat, but comparatively thin, wall. To help it stand upright, it has four rings attached to it, two on either side and at the top. These can be connected to guy ropes, for example, so as to keep it standing. The rings also allow the bag to be lashed to a pallet of ammunition on board ship. The fourth product is the Waterwall itself, although at times it appears that the whole product line goes under this name. Mr. Ward, a senior employee of Cintec, sets out in his first witness statement the development of this latter product. It is not necessary to go through this in any detail. For present purposes it is sufficient to record that initial tests to see whether the water mitigation principle worked were carried out using vertical piles of water-filled mattresses. Initially they were not made with the dropstitch material. If large stacks of such mattresses were made, they became unstable and, when that happened, a sheet of plywood was used at either end of the stack, kept in place by a heavy block, to prevent the stack falling over. A photograph of an experiment being conducted in this way is to be found in bundle H, at tab 15, page 38. This arrangement was not to be used for sale to customers.

It appears that two versions of the Waterwall have been or will be offered to customers. The first is depicted, for example, in bundle D, tab 30, page 39. It consists of a number of water-filled mattresses made of dropstitch material and mounted on their sides with very tall central ones being flanked on either side by shorter ones which act rather like bookends to keep the taller central ones upright and in place.

The alternative design is that depicted in bundle H, tab 15, page 49. As Mr. Ward explained, dropstitch fabric is very expensive. One of the design criteria behind the development of all the products was to avoid the use of any solid members, for example, to support the structure. Particularly in the case of Waterwall, it was also designed to reduce, as far as possible, expensive use of the dropstitch material. To that end, the modified version of Waterwall consisted essentially of two large water-filled mattresses resting against each other at the top with their bases separated. In fact a third smaller mattress is located between the feet of the two upstanding mattresses. In cross-section the product looks like a triangle.

The first in issue is ‘750. This was filed in September 1994. The application was published in November 1995. The invention is described in the specification by reference to a number of different embodiments. In essence, each of them depicts a blast screening device in which a series of water-filled tubes are placed between the explosion and the location to be protected. The specification in a number of places refers to the water-filled devices as being made of lay-flat plastic tubing. Some of the advantages of this are set out at page 13 of the specification as follows:

“The tubes 22 are conveniently formed from plastics film which can be supplied as a lay-flat extrusion in long continuous rolls. Ordinary polythene is cheap and has proved to be a satisfactory material in use. Groups of the tubes 22 can be made in long zig-zags, bonded together and then encased in the surrounding flexible material 23, typically of fabric or plastics material.” (p 13, line 33, et seq.)

An illustration of the lay-flat tubing is to be found at figure 4. The advantages of lay-flat tubing are consistent with the overall advantages claimed to be secured by the patent invention. This is set out at page 6 of the specification:

“A number of advantages result from the invention and included among these may be mentioned: -

1.

Very low cost of the equipment used.

2.

Very light equipment for transport to, and erection on, site.” (p 6, line 1, et seq.)

This benefit of the use of lay-flat plastic tube is referred to a number of times. For example, at page 18 the patentee says:

“The protective shield is formed from relatively cheap plastics film in tube form which can be laid flat in a tortuous path in its stored or collapsed condition. When expanded, the tubular film material forms a desired structural shape bridging over the device to be protected.”

And at page 19:

“Although lay-flat tubing is very cheap it does not offer convenient connections to hoses, which are needed in larger numbers for parallel filling. Hard or heavy hose fittings should be avoided because of the need for flat packing and the need to avoid hard fragments that could be thrown out by the explosion.”

Of the various embodiments illustrated only two need to be referred to. Figure 1 illustrates an arrangement rather like a step ladder over the rungs of which are drooped the lay-flat tubing. When filled with water, this forms a wall of inflated volumes lying one in front of another in a cascade. At any one point between the front and back of the device, there are four overlapping water-filled volumes. Figures 5 to 8 depict a far more elaborate arrangement designed to fill a water-filled explosion suppression device which surrounds and covers, say, a car bomb. It takes the form of a structure rather like a bouncy castle filled with the lay-flat tubes, which when inflated form a “hut” around and over the vehicle, all the walls and roof containing series of water-filled tubes.

The defendants allege infringement of claims 1, 2, 8 and 12 by each of Cintec’s four (or five) products. Since the same critical points of infringement arise in relation to all the pleaded claims, it is only necessary to consider claim 1 which is in the following terms:

“A method of shielding a given location from the effects of detonation of explosive material which includes placing at least one blast-absorbing means between the explosive material and the given location and allowing energy resulting from detonation of the explosive material to be absorbed by said at least one blast-absorbing means, the blast-absorbing means being at least one rupturable flexible liquid containment device comprising a length of lay-flat plastic tubing, characterized in that the or each device is placed proximate to the explosive material and between the explosive material and the given location to be shielded and in that the or each said device is then filled with liquid such that a series of separated volumes of liquid is created between the explosive material and the given location”.

Although the meaning of this appears to me to be plain, the specification contains an explicit explanation of the last two lines of this claim. At page 2 it states:

“It should be understood that the series of separated volumes referred to in each of the independent claims runs in the direction from the explosive material to the given location”.

There is no dispute between the parties as to what is meant by the expression “lay-flat plastic tubing”. It is, as its name suggests, a tube of plastics material which, after extrusion and sufficient cooling, is is designed to lay-flat. It is capable of being stored in that condition. It is the type of tubing which is used, for example, to make plastic carrier bags. One of Cintec’s expert witnesses, Mr. Gary Howe, explained how this type of tubing is made. A tube of plastics is extruded through a round extruder nozzle through the solid middle of which passes an aperture which can supply pressurised air to the inside of the tube. This internal air stretches the tube to give it a wider diameter and thinner walls. Once sufficiently cool, the tube can be flattened without opposing faces sticking to each other. The flattened tube can then be wound onto rolls, as referred to in the ‘750 patent.

None of the Cintec products use lay-flat plastic tubing. As mentioned above, they use dropstitch fabric. This consists of two layers of quite thick plastic sheeting. The facing surfaces of the plastic sheets are connected to each other by a myriad of plastic filaments or threads. The general appearance is similar to what one would see if molten cheese were squeezed between two slices of toast and the slices of toast were then pulled apart slightly.

Mr. Howe says that the structure of dropstitch fabric is “significantly different” to that of lay-flat tubing. He was not challenged on that. Indeed, the only other relevant evidence given on the subject was that given by Professor Salter, the defendants’ expert. In his witness statement he only offers the opinion that there would be infringement “if a favourable definition of lay-flat plastic tubing was given”. He offers no technical reason why it should be. On the contrary, he explains why, in his view, the change to dropstitch fabric was retrograde. This was expanded upon under cross-examination. He said that the differences between dropstitch fabric and lay-flat plastic tubing were not only obvious but they, and the effect that they would have on the way the device worked, would have been apparent to a skilled worker. The fact that dropstitch worked differently and, in his view, worse would have been apparent.

All the claimant’s products fail to use one of the essential features of the claims. In addition, in use neither the Blast Bin, the Bomb Bin nor the Navy Blast Mitigation Bag utilize separated volumes of liquid in a series between the explosive material and the location to be protected by the device. It follows that all the allegations of infringement of this patent fail.

Patent ‘259 has a priority date of 10th March 1998 and the application was published in September 1999. It carries the title “An explosion-suppressing structure”. The invention can be described by reference to figure 1. This depicts a central rectangular block (10) made out of polystyrene. Over it, saddlebag-style, are draped two rupturable water-filled bags (11). Figure 2 shows that a wall can be made by placing one layer of these units on top of the other. The blocks are arranged like bricks. The rupturable bags rest on the bags below them. Alternatively, as shown in figure 3, the rigid polystyrene block can be hollow, in which case the void can be filled with water. Once again, a wall can be made by resting one layer of blocks on top of another. From these units roofed structures are then built. The roof members rest on the walls constructed as described above. The roof members either support more water-filled rupturable bags or are hollow and filled with water, or both. Structures made in this way can be erected around and over an explosive device.

The only Cintec product alleged to infringe this patent is the Blast Bin. That is said to infringe claims 1, 2 and 5. During the course of argument it appeared that the defendants were also suggesting that the triangular version of the Waterwall infringed as well. No application was made to amend to raise that case, but I will consider it anyway.

In considering this part of the case, Mr. Howe emphasized that not only was ‘750 prior art to this patent, but it was cited in the Patent Office against it. Claims 2 and 5 are dependent on claim 1, so it is only necessary to consider the latter. It reads as follows:

“As an explosion-suppressing structure including at least one rigid explosion-suppressing barrier, and further including a roof member spanning the top of the barrier or the tops of at least two of the barrier (sic), the roof member supporting or defining at least one rupturable liquid-filled container, the liquid being atomised in use”.

It is apparent that the specification draws a distinction between rigid blocks and rupturable bags. The argument on infringement, however, goes as follows. The Blast Bin has vertical walls and a roof. Although they are all made of rupturable bags, because they are filled with water under pressure, they become self-supporting and therefore rigid. Therefore, the walls consist of “rigid explosion-suppressing barriers” as required by the claim. In the context of the specification, this cannot be what the claim means. A rupturable bag, even if filled under pressure, is not a rigid barrier. A water-filled bag may be taught, but it is not rigid as required by the claims. Indeed, as Mr. Howe points out, if it were, these claims would clearly not have overcome the citation of the ‘750 patent and in particular the hut structure depicted in figures 5 to 8. This allegation of infringement fails.

For the same reason, the unpleaded allegation of infringement levelled at the triangular version of the Waterwall fails. For added measure, the latter also avoids infringement because it does not have a distinct roof.

Patent ‘805 This has a priority date of 27th June 1996. Once again, ‘750 was cited against it in the Patent Office. In essence, the invention consists of a collapsible frame over which a rupturable water-filled bag is draped. There is only one drawing. It depicts what is described as a “collapsible easel” (2) forming a tent-like structure with a bracing bar (4) used to keep the bottom of the two sides of the easel apart. Over this is draped, saddlebag-style, two water-filled rupturable bags (8). They are filled with water under pressure.

The defendants have pleaded that the Navy Blast Mitigation Bag infringes claims 1, 3, 6 and 8 of the patent. Further, it is alleged that all products infringe the “invention described in the said specification”. The latter plea is meaningless. I will assume that all Cintec’s products are said to infringe claims 1, 3, 6 and 8. However, since the latter three claims are all dependent on claim 1, it is only necessary to consider that. It reads as follows:

“A method of protecting a given location from the effects of an explosion, comprising erecting a free-standing, collapsible, rigid frame between the given location and the site of the explosion, the frame supporting at least one rupturable container filled with liquid which is aerosolized by the explosion.”

This claim requires the use of two discrete items: a free-standing, collapsible, rigid frame and at least one rupturable container. Once again, it was said that when the claimant’s products are filled with water they become rigid. They therefore became free-standing, collapsible, rigid frames. Once again, if this were so the claims would read onto the hut example in the prior art ‘750. Furthermore, the specification itself distinguishes between the pressure-filled rupturable containers and the rigid frame which they are draped over. Since none of Cintec’s products include free-standing, collapsible, rigid frames, they cannot infringe.

I should, however, mention three specific arguments on infringement. First, the defendants placed reliance on photographs of an experiment with the Blast Bin. It shows two pieces of timber cross braced and supporting the open mouth of the Blast Bin. It was said that this was a free-standing, collapsible, rigid frame. Mr. Ward explained that these timbers had been used in one set of trials when, due to a shortage of non-return valves, water was leaking from the Blast Bin which was beginning to deflate and collapse. As a temporary expedient, and to allow the test to continue, cross timbers were used to stand the Blast Bin up. Mr. Frost suggested that Mr. Ward was lying when he gave that evidence. I do not think he was. I can see no reason why he should. As his written evidence makes clear, and was not challenged, one of the early design criteria settled on by Cintec was that it did not want any of its products to include rigid parts. In any event, it was not even suggested that the timbers were either free-standing or a frame.

The other allegation refers to the photographs of a Navy Blast Mitigation Bag taken at an exhibition in the United States of America. It shows a slender plastic frame attached to the rings on the side of the bag. It was said that this illustrates a free-standing, collapsible, rigid frame. It clearly does. However, Cintec’s evidence was that due to winds at the demonstration site it was thought expedient to put up a temporary frame to show the Mitigation Bag standing upright. For the purposes of the display, the bags were filled with air, not water. There was therefore a risk that they would be blown about. The stand was intended to stop that happening. Cintec’s local representative, Mr. Lloyd-Rees, at the last moment went to a local do-it-yourself store and purchased some umbrella stands and plastic tubing which he fashioned into a display stand. The receipts from this purchase were produced. Mr. Lloyd-Rees, Mr. James and Mr. Ward all corroborated this version of events. Mr. Frost challenged them all. He produced a document which he said showed there were no high winds at the site on the date in question. He invited me to find all of them guilty of perjury. I do not do so. Mr. Frost got nowhere near making out such a case.

The third issue arises out of the use of the Navy Blast Mitigation Bag in service. As Mr. Parkes pointed out, it can be lashed to the side of an ammunition pallet in the magazine onboard ship. He suggested that that would be a use which amounted to an infringement. However, there is nothing to suggest that such a pallet is collapsible as required by the claim, nor was it demonstrated to me that it stands between the ammunition and the site to be protected from the explosion; that is to say by the rupturable bags. In my view there is no material which suggests that these products are used or are expected to be used in an infringing way. The case of infringement fails.

This leaves only patent ‘614 in issue. This is a divisional patent ‘259 and discloses the same arrangements of polystyrene blocks with rupturable water-filled bags draped over them. Once again, ‘750 was cited against this patent in the Patent Office. All claims, except the omnibus claim, are dependent on claim 1 and, therefore, it is only necessary to consider that claim. It reads as follows:

“A method of protecting a given location from the effects of an explosion, comprising erecting a rigid wall of rigid blocks between the given location and the site of the explosion, the wall supporting or defining at least one rupturable container filled with liquid which is aerosolized by the explosion.”

It is not necessary to go through this patent in detail. All the reasons which led me to a finding of non-infringement in relation to ‘259 apply equally here. The claimants products do not include rigid blocks.

I have dealt above with the issues raised on the pleadings and one or two that were not. However, on the last day of the trial, the defendants said there were other embodiments of the Cintec range of products which they wanted to assert were infringements of one or other, but they did not indicate which, patent. These embodiments were illustrated in Cintec documents which had been included in its disclosure. Although the defendants asked to see all the disclosure documents and Cintec made them available for that purpose, the defendants, particularly Mr. Frost, who has in effect run this case on the defendants’ behalf, did not take up the offer to inspect. Cintec left the documents out of the trial bundle because they believed they were irrelevant to the issues. In any event, the defendant said they had not seen the documents until just before the trial and wanted to put them to Cintec witnesses. Rather than have another round of litigation, Mr. Howe agreed to make Mr. Ward available again for cross-examination.

In the light of the defendants claims to ignorance of these embodiments, it is apparent that they were not the subject of any threats. The question is only one of infringement. The first additional embodiment which needs to be considered is illustrated in two pieces of paper. One consists of a drawing and the other consists of a coloured and rather refined version of the first. Mr. Ward explained that it represented a theoretical design which had never been made. In fact, it was only drawn for the benefit of Cintec’s Israeli agent for showing to interested parties in that country. There was no feedback from the agent. The design has never been offered for sale or supply to anyone in the United Kingdom. It does not appear in Cintec’s website. It does not appear to me that the defendants have made out a case that Cintec have done or threatened to do anything in the jurisdiction in relation to this embodiment. The allegation of infringement fails, whatever the design. Furthermore, looking at the four patents in suit, it appears that only ‘805 could possibly be relevant. However, even here, it was not shown that this has a frame, that the frame (if it existed) is freestanding or that it is collapsible. Once again, the allegation of infringement fails.

The other embodiment takes the form of a drawing of a possible design which is to be found on a draft of Cintec’s brochure, but which Mr. Ward explained had not been included in the final brochure, had never been made and had not been offered to potential customers. It is likely, therefore, that any case of infringement based on this is likely to fail. However, Mr. Howe made it clear that if this embodiment was to become the subject of an allegation of infringement, presumably of patents ‘259 or ‘614, his client would like to reconsider its decision not to attack validity. In the end, I did not understand the defendants to press this case. In the end I have decided that the issue of infringement by this theoretical embodiment was not raised before me and I will consider it no further.

In the result, Cintec have succeeded in their claim and the defendants have failed in their counterclaim. However, before ending this judgment, I should say something about the conduct of the trial.

This action came on for hearing with a time estimate of two to three days. In my view, even two days would have been generous. On the issue of threats, there was no dispute as to the terms of the letters in suit. As pointed out above, Mr. Parkes admitted in his written statement that he told Quinetiq of his intention to sue Cintec. The only substantive issue was infringement. Even here, the matters of dispute were small. The only points of construction were as to the meaning of the expression “lay-flat” plastic tubing in patent ‘750 and “rigid” in the other patents. On the former, there was no dispute between the experts that Cintec’s product did not contain such material. On the latter, there was not nor could there have been any relevant evidence.

Notwithstanding the time estimates and my best efforts to keep the parties to the issues, this trial occupied five court days. In large part, responsibility for this lays squarely on Mr. Frost. As I have said, he conducted the action on behalf of the defendants. Mr. Parkes was not well served by him.

Mr. Frost has considerable experience as an advocate, a hobby he has been practising since 1997. He told me that he has appeared in many actions. He told me that during the last financial year, he had appeared 127 times in court, mainly in Scotland, although he has no legal education or qualification. This clearly has led him to acquire considerable self confidence as an advocate. Unfortunately, this did not lead him to display the moderation or economy one would expect or demand of a professional. Although this case was only concerned with actions committed within the jurisdiction of this court, time after time he suggested that Scottish law and procedure is very different. Some of his claims on this front I found surprising. For example, during one of his repeated complaints about the fact that this case had come on rapidly as a speedy trial, he intimated that to do so breached his human rights and that in Scotland it was not possible to order a speedy trial when a litigant in person was involved. He told me other things about the law and practice in Scotland, which I found surprising, but which were in any event irrelevant. Furthermore, Mr. Frost was capable of making wild and damaging allegations without regard to whether there was material to support them or whether they were relevant. In that vain, he accused Mr. Ward of committing an offence which would lay him open to a court martial, and he accused Mr. Howe’s instructing solicitor of professional misconduct. All of this, as with all of his submissions, was delivered in a deceptively mild and, indeed, meek tone. Furthermore, he paid little or no regard to the need for balance. As I have said already, Mr. Frost protested on a number of occasions about Jacob J’s order that this be treated as a speedy trial. Breaches of human rights were complained of. It was only at the very end of the trial that Mr. Howe drew my attention to what had happened before Jacob J in July of this year. Dates for the trial in December of this year were being discussed, but Mr. Frost indicated that that was too late. He wanted the trial in August. In those circumstances, a complaint by Mr Frost that his human rights were being infringed because this trial came on for hearing at the end of September, which was too soon for him, is difficult to reconcile with his suggestion to Jacob J that it should come on earlier.

As I say, Mr. Parkes was not well served by Mr. Frost. In July, Jacob J had pressed the defendants to obtain proper professional representation. Mr. Frost said they did not to do so, not through lack of funds but through choice. The way this trial was conducted shows just how right Jacob J was. I venture to suggest that had the defendants given full and complete instructions to competent patent lawyers and had taken their advice, this case would either not have come to court at all or it would have been over much more quickly. The cost consequences of failing to pay heed to Jacob J are likely to be significant.