Finecard International Ltd (t/a the Ninja Corporation) v Urquhart Dyke & Lord (A Firm) & Anor

This is the judgment on the Claimant’s application dated 28^th June 2005 whereby they applied for an order that the Defendants’ causation defence set out in paragraphs16.3, 17-21 and 25 of their Defence be summarily dismissed pursuant to CPR 24 on the basis that the Claimant believed that the Defendants had no real prospects of succeeding on that causation to defence and there is no other compelling reason why the issue should be disposed of at trial.

In addition at the conclusion of the judgment there will be a further application to amend the Particulars of Claim. Those amendments do not affect the summary judgment application and they have been agreed on the usual terms.

The First Defendant is a firm of patent and trademark agents, the Second Defendant is one of its partners. They are jointly represented. The Claimant was previously one of the Defendants’ clients.

The claim arises out of exclusive licences granted to the Claimant.

In August 1990 a company called Spring Form Inc applied for a European Patent (“the Patent”).

On 1^st July 1997 the Claimant entered into a licence with Spring Form Inc which gave it an exclusive right to exploit the Patent in England and Wales (“the 1997 Licence”). That licence was recorded on the register of patents on 9^th December 1998.

On 9^th September 1999 the Claimant entered into a new licence with Spring Form Inc which again gave it exclusive rights to exploit the Patent in England and Wales (“the 1999 Licence”). As will be seen from a comparison of the 1997 and the 1999 licences as set out further in this judgment the latter gave the Claimant substantially increased rights.

It is common ground between the parties that by 12^th January 2000 the Claimant had provided a copy of the 1999 licence to the Defendants. That letter requested the Defendants to register the 1999 licence as soon as possible if they had not already done so. In any event on 14^th February 2000 the Claimant wrote to the Defendants seeking confirmation that they had registered the 1999 licence. The Defendants have admitted that on receipt of that letter they came under a duty to record the 1999 licence but regrettably did not apply to record the licence until 28^th June 2001. It was registered on 2^nd July 2001.

The Defendants have admitted that their failure to apply to record the licence until 28^th June 2001 was a breach of the duty that they owed to the Claimant.

It is equally common ground that as exclusive licencee of the Patent the Claimant has the right to bring proceedings for any infringement to the Patent committed in England and Wales such right being granted to it being pursuant to section 67 of the Patents Act 1997.

In December 1998 the Claimant commenced infringement proceedings against a number of parties. It was represented in those proceedings by a firm of solicitors and specialist leading counsel both of whom had extensive experience in the Patent area. The Claimant’s case was that the Patent was being infringed and that as exclusive licencee of the Patent it was entitled to monetary relief for that infringement. On 30^th May 2001 Pumfrey J upheld the validity of the Patent and found that it had been infringed.

A remedies hearing was held on 23^rd-25^th July 2001 before Pumfrey J. The infringers resisted the Claimant’s claim for monetary relief on a number of bases. In particular they asserted that the Claimant was not able to claim monetary relief for the period 10^th September 1999 (when the 1999 licence was granted) to 2^nd July 2001 (when the 1999 licence was registered) because the 1999 licence was unregistered during the period (“the unregistered period”).

At the remedies hearing the Claimant put forward arguments through its counsel that in respect of the unregistered period that by entering into the 1999 licence the Claimant did not become an exclusive licencee but merely remained one (having already entered into the 1997 licence). It was argued therefore that as a consequence the failure to register the 1999 licence did not prevent the Claimant from recovering monetary relief in relation to the unregistered period.

In order to understand that submission it is necessary to consider two sections of the Patents Act 1977. The first section to be considered is section 33 which provides as follows:

The purpose of that paragraph is to provide that priority as between persons who claim to have acquired the property in a Patent shall be regulated by the priority according to registration.

In other word it is a paragraph designed to encourage openness about registered Patents and it encourages that openness (in an Admiral Byng sense) by providing that priority will be lost without registration. This purpose is accepted by the decision of Sir Donald Nicolls the Vice Chancellor (as he then was) in Molnlycke AB & Anr v Procter & Gamble Ltd & Ors (5) 1994 RPC 40 page 139.

It will be seen from the judgment of Pumfrey J to which I shall make reference further in this judgement that he too emphasised this spirit as regards section 68. Section 68 provides:-

68.

Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, the court or the comptroller shall not award him damages or order that he be given an account of the profits in respect of such a subsequent infringement occurring before the transaction, instrument or event is registered unless—

(a) the transaction, instrument or event is registered within the period of six months beginning with its date; or

(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter

It was submitted by Mr Wyand QC who appears for the Defendantsthat the provision of registration was not intended to be punitive. I am not convinced of that. It seems to me that the purpose of the statute was to encourage people to be open as regards the entitlement to enforce patents by registering them. In the case of section 68 the failure to register provides a severe sanction. No damages or account of profits are to be awarded for infringement of the right for any period before the transaction is registered (subject to the exceptions in subsections (a) (b) which are not relevant for this purpose). The size of that sanction is well indicated by this case. The Claimant contends that the lack of registration has cost it £1,318,000.

The submission on behalf of the Claimant before Pumfrey J was based on the phrase “where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licencee of a patent……”

The submission was that the Claimant had become an exclusive licencee by virtue of the 1997 licence and that the 1999 licence continued that exclusive licence status but it did not “become” an exclusive licencee because it already was such; it merely remained a licencee. Thus it was submitted there was no requirement to register the 1999 licence.

It is at first sight a surprising submission. The 1997 licence granted an exclusive licence from 1^st July 1997 to 30^th June 2002. The 1999 licence purported to grant a term from 1^st July 1997 (i.e. retrospective to the commencement date of the 1997 licence) to the expiry of the patent. The register in this case had also the full terms of the 1997 licence so that anyone searching the register would know that the 1997 licence granted the Claimant an exclusive right for 5 years only. A search therefore (assuming the 1999 licence was not registered) by potential infringer would reveal that the Claimant had no exclusive rights after 30^th June 2002. Yet the argument put forward on behalf of the Claimants (and repeated by Mr Wyand QC before me) was that nevertheless the 1999 licence could be enforced after 30^th June 2002 against an infringer despite its lack of registration and thus despite the inability of a potential infringer to find that licence on the register.

This submission was derived from the wording of section 68 referred to above. It leads to a number of odd results. Thus Mr Wyand QC submitted that if there was a break in the continuity of the licence i.e. a gap where there was no exclusivity a subsequent licence agreement would have to be registered. If for example the licence was renewed 2 days or so before its expiry for a further term no registration will be required. However if the licence was renewed 1 day after the expiry of the original one the second licence would be required to be registered. It was by no means clear what would be the result if the licence was renewed a day after the expiry of the old one but backdated to the end of the old one.

He dealt with this argument in two paragraphs of his judgment as follows:-

“In this case, there are three periods which are to be considered. Ninja was granted an exclusive licence on 1 July 1997, to ‘manufacture, distribute and sell the Licensed Structure(s) in the Territory.’ This agreement was registered on 9 December 1998. On 9 September 1999, Spring Form and Ninja entered into a second agreement which was not registered until July 2001. The recitals to the new agreement state that Spring Form and Ninja wish to amend the earlier licence agreement on the terms set out in the new agreement. The new agreement does not, in fact, operate by amendment of the earlier agreement but replaces it and it states its commencement date as having been 1 July 1997. It contains a Californian choice of law clause and a provision that it is deemed to have been executed in Orange County, California. No evidence was adduced of Californian law. The new agreement contains no reference to the earlier terms and contains an entire agreement clause (20.11). This is as follows:

This Agreement contains all the terms and conditions agreed upon [by] the parties hereto with reference to the subject matter hereof. No other agreements oral or otherwise shall be deemed to exist or to bind any of the parties hereto and all prior agreements, letters of intent, understandings and representations are merged herein and superseded by this agreement. Licensee represents that there are no contemporaneous Agreements or understanding between the parties [other than those] that are contained herein. This Agreement cannot be modified or changed except by written instruments signed by all the parties hereto.’ (my emendations).

Mr Silverleaf QC submits that the disability imposed on Ninja by section 68 of the Act does not arise on the coming into force of the second licence, since by that document Ninja did not ‘become ... an exclusive licensee’ but merely remained one. It is far from clear to me in the light of this provision that it is open to Spring Form to allege even that there was a prior agreement, let alonethat it conferred a licence on Ninja, but I prefer to base myself on what I think is the purpose of sections 68 and 33. These sections exist to coerce patentees and others entering into relevant transactions concerning the patent to register their interests. Where an agreement plainly replaces an existing agreement, which I conclude is the combined effect of the clause which I have set out and the commencement date of 1 July 1997, it is this agreement which is the agreement by which Ninja became Spring Form’s exclusive licensee and this agreement which should be recorded on the Register. I conclude that Ninja were not disabled from claiming damages or an account of profits during the period from 9 December 1998 to 9 September 1999 but were not entitled to claim any other such relief save in respect of infringements after registration in July 2001”.

The judgment construes the effect of the 1999 Licence as extinguishing the 1997 Licence. The learned judge came to that conclusion because of the combined effect of clause 20.1 referred to in paragraph 22 of his judgment and the backdating of the commencement to 1^st July l997. These two provisions overrode the fact that the recitals to the 1999 agreement recited that the parties intended to amend the licence.

Mr Wyand QC attacks the correctness of the decision of Pumfrey J.

The first point he makes is that the judgment in paragraph 22 contained an error and because it stated that the 1999 agreement had a Californian choice of law clause and no evidence was adduced to Californian law. Nobody corrected that error when the judgment was issued. The 1997 agreement contained such a clause; the 1999 agreement applied New York law.

The second point that Mr Wyand QC makes is that on advice on New York law received by the Defendants in New York law the 1999 agreement would not have been construed as being effected retrospectively to 1^st July 1997. That would mean he submits that the primary reasoning of the judge in paragraph 23 based on the commencement date backdating and clause 20.11 would have been to the opposite effect had the correct position of New York law been cited to him.

The New York law position as contended for by the Defendants is summarised in paragraphs 11 – 13 of the witness statement of Andew Hobson a partner in the Defendants’ solicitors dated 15^th July 2005. He says this:-

“I have consulted Mr Douglas F Broder of Nixon Peabody in New York to advise on New York law in relation to the September 1999 agreement and in particular, the entire Agreement clause, clause 20.11. Mr Broder is an Attorney called to the New York Bar. He has advised me that clause 20.11 is what is called under New York law a “general merger clause” and that the point of such clause is to prevent the introduction of parole evidence, that is to say evidence outside the four corners of the Agreement that varies or contradicts the terms of the Agreement and to effect the intend of the parties that the Agreement is completely integrated.

Mr Broder also tells me that New York Courts will not ignore the terms of a previously executed Agreement for the purposes of determining the rights and obligations of the parties during the time before the earlier Agreement was superseded by a later Agreement containing a general merger clause.

Mr Broder’s evidence is that a New York Court would find that notwithstanding the general merger clause in the September 1999 Licence, that Licence did not retroactively revoke any rights that the Claimant had that arose out of the 1997 Agreement, a validly executed independent Agreement. Thus the Claimant’s rights under the July 1997 Licence would continue to govern until the execution of the September 1999 Licence when the earlier rights would have been superceded, but not retroactively replaced”.

Now of course the New York law opinion has no impact on the effect of section 68 PA 1977. Mr Wyand QC however submits that the conclusion of the learned judge was wrong because he was not told the true New York law position. Had he been told he could not have concluded that the 1997 agreement was of no effect as a result of the extinguishment of that agreement by virtue of the 1999 agreement. I should say that there is one oddity that no-one was able to explain. Despite the judge determining that the 1999 agreement was the only relevant agreement by the time damages came to be assessed he nevertheless awarded damages under the 1997 agreement despite his finding that the agreement was of no longer of effect because the entire relationship of the parties backdated to 1^st July 1997 was governed by the unregistered 1999 agreement.

Mr Wyand QC nevertheless submits that on the basis of New York law as advised to the Defendants the judge would have had to conclude that the 1997 agreement had not ceased to exist so that when one came to consider section 68 the Claimant had become an exclusive licencee by virtue of the 1997 agreement which initially governed their relationship and remained an exclusive licencee (as opposed to became) by virtue of the 1999 agreement.As it only remained an exclusive licencee by virtue of the 1999 agreement it did not have to be registered. In other words the New York law provides substance to the unsuccessful argument raised on behalf of the Claimant before Pumfrey J as he could not have concluded as he did that there was only one effective agreement which governed the relationship between the parties and that was the unregistered 1999 agreement.

He reinforced this submission by submitting that if the Molycnke case had been cited that would have provided support for this broad purposive approach to section 68, I do not see that that case assists. Pumfrey J in paragraph 23 made the same broad general expression of intent as regards the section as did the Court of Appeal in the uncited Molyncke case. If anything it reinforces Pumfrey J’s thought processes.

Nor in my opinion does the case of 3M v Rennicks [1992] RP 331 provide any assistance. On the facts as regards registration there was a reversal i.e. the earlier licence agreement had not been registered but the later one had Aldous J as he then was construed the second agreement as being the one which operated to govern the relationship between the parties and thus enabled the Claimant to obtain damages because that agreement was registered. I derive no assistance from that decision because in my view it turns on the construction of different documents and generally a judge’s view as to the effect of different documents can generally provide no assistance as to how a judge should construe entirely different documents on different occasions. What is interesting however is that if the test is in effect when one first became entitled to an exclusive licence one would have expected the document that would have been required to be registered on Mr Wyand QC’s argument to be the earlier agreement. In fact Aldous J concluded that the early agreement ceased to exist and the later agreement was an entirely new agreement.

The first response of the Claimant to this defence was to seek clarification as to whether or not it was being alleged that the former advisors had been negligent. The Defendants declined to say so but it is quite clear in my view that in effect the Defendants are so saying. That became evident as the arguments were deployed. Mr Wyand QC submitted that if anybody had made an enquiry as to New York law they would have been provided with the material which supported the failed arguments and would have led inexorably to a conclusion that the judge would have decided the case the opposite way. The Defendants are of course not privy to the reasons why these arguments were not deployed. The Claimant has not disclosed the privileged material but has said it had no role in the way in which its advisors presented the case. Further Mr Stewart QC was forced to acknowledge that in reality the Claimants would have to waive privilege if this matter proceeded further. The Claimant’s position however was as I have said that they had had no role in the presentation of the case without reference to New York law. Mr Wyand QC said that he personally felt uncomfortable about pleading negligence against another professional when he is not aware of the material which led to the case being deployed in the way it was. That is if I might say so a commendable view in the light of professional negligence litigation in 2005.

I can put Mr Stewart QC’s submissions shortly. He submits that the Defendants are saying that the failure to put the case properly as they contended broke the chain of causation flowing from their failure to register the 1999 licence. He referred me to a number of authorities. In particular he referred me to the decision of Lewison J in Vision Golf Ltd v Weightmans [2005] 1675 EWHC (Ch) and in particular paragraph 30-38. He submits that the failure on the part of the Defendants to categorise the conduct at the hearing before Pumfrey J as being negligent means that in any event cannot be a break in the chain of causation. In this context he referred me to the Cook v Swinfen [1966] 1 WLR 635 and Govenors of the Hospital of Sick Children v McLaughlin & Harvey plc (1987) Con L.R. 25. Echoing my observations about the “Modern attitude “ to professional negligence I doubt whether Cook v Swinfen would have been decided as regards the Barristers error in the same way today. I did not derive a great deal of assistance from the Govenors of Hospital case but I did find assistance from the analysis of the intervening act in British Racing Drivers Club v Hextall Erskine [1996] 4 All ER 667 at page 681 and the extracts from Clerk & Lindsell on tort referred to in the judgment of Buxton LJ in Roberts v Bettany [2001] All ER (D) 128 EWCA Civ 109. I do not accept that the intervening act necessarily has to be negligent; it is a question of looking at the facts of any particular case and to decide what impact that intervening act had on the original wrongdoing of the Defendant and whether or not it was so powerful a nature that the conduct of the plaintiff was not a cause at all but merely part of the surrounding circumstances.

Mr Stewart QC accepted that for the purpose of a Part 24 application it was necessary for the Claimant to assume all of the facts and law put by the Defendants was correct. In a powerful and compelling submission however he reminded me of the duty cast upon the Defendants. He rightly drew an analogy with that of a conveyancer and referred me to the judgment of Robert Walker as he then was in Connor & Labrum v Regoczi-Ritzman (1995) 70 P&CR 41. The purpose of the solicitors retainer was to avoid potential disputes. Thus he said if there was an argument of whatever level of arguability as to whether or not the 1999 agreement was registerable the only sensible course of action on the part of the Defendants was without more ado to register the charge rather than expose their clients to an argument (of whatever strength) that it ought to be registered.

Thus he submitted that failure to register was fundamental and that has led to the difficulties. He then submitted that whether or not the Defendants arguments were a good arguable case that could have been put before Pumfrey J is irrelevant. The reason it is irrelevant is because the failure to register has exposed the Claimant to the risk that it might not make any recovery if the 1999 agreement is not registered. He does submit that Mr Wyand QC’s submission would only be effective if he could argue that any contrary argument i.e. that the 1999 agreement ought to have been registered, was simply not sustainable at all. Otherwise the Claimant is faced with an argument which involves a possibility (to be assessed on a loss of a chance basis effectively) that the failure to register might be fatal to its claim to damages.

I agree with that analysis.

I do not accept that if Pumfrey J had been told the New York law position as put forward by Mr Hobson’s witness statement that he would have come to any different conclusion as regards the period from 1^st September 1999 to 2^nd July 2001 (the relevant loss Period). In my view Mr Stewart QC is correct in his submission that the New York law identified merely provides that the 1999 agreement only operates from 1^st September 1999. If that is correct for the period in question the Claimant would have had to sue on the 1999 agreement.

In my view the purpose of section 68 is to provide a regime whereby people who assert property rights in patents register their rights so as to put the world on notice of their existence. It seems to me that the wording of section 68 is plain namely that what is required to be registered is the transaction, instrument or event by which a person has become the proprietor or one of the proprietors or exclusive licencee of a patent. In other words the instrument or other transaction or event upon which you rely to enforce your rights must be registered. In respect to the period 1^st September 1999 to 2^nd July 2001 Pumfrey J concluded that the relevant document was the 1999 agreement because it’s wording had the effect of extinguishing the 1997 agreement. Assuming that that is incorrect on the application of New York law nevertheless the result is still the same. What agreement entitles the Claimant to sue for infringements after 1^st September 1999 on the application of New York law? It is the 1999 agreement and that is the agreement whereby it became an exclusive licencee for that period. I agree with Mr Stewart QC’s submission that Mr Wyand QC’s construction requires the word “first” after the word “person” in section 68.

In my view Mr Wyand QC’s construction shows great weakness in the registration procedure as shown by the examples referred to above. Mr Stewart QC in his reply showed another example which will be even more bizarre. If after 31^st July 2002 neither the 1997 nor the 1999 agreement had been registered on Mr Wyand QC’s analysis the Claimant would only have to register the 1997 agreement despite the fact that it no longer governed their exclusive licence and had expired. It is odd if the effect of the statute means that the actual document which gives rise to the rights which are asserted does not have to be registered but one which has expired does.

It seems to me that a more sensible construction is that where a party wishes to assert a right the relevant transaction, instrument or event which creates the right for the period in question must be registered.

It follows therefore that I conclude that the Claimant is right and this part of the Defendants defence has no reasonable prospect of success and should therefore be struck out.

My conclusion is that the arguments which Mr Wyand QC submits ought to have been put up would have led nevertheless to the same result. It follows that at this stage there can be no justification for suggesting that the former professional advisors have been negligent to the extent that their negligence if any has broken the chain of causation. However as debated before me there remains the issue of quantum. I have shown that the arguments against Mr Wyand QC would not inevitably be doomed to failure (indeed the opposite is my view). However I cannot say that Mr Wyand QC’s arguments themselves would have been doomed to failure. It follows therefore that it could have been argued along the lines of Mr Wyand QC’s submissions on behalf of the Claimant. That might have strengthened the Claimants position and might have an impact on the question of damages. It might be said that when the damages are assessed they ought to be assessed on a loss of a chance basis as opposed to full recovery. In that eventuality it may be the case that the former legal advisors might have to be brought in to assess whether or not they have caused or contributed to that loss by the way in which they presented the case. I say no more about that at this stage but it is something that the parties in my view will have to consider actively as this action proceeds. It has weakened partly the justification for the present application but not entirely. The Claimant was right to make the application now because otherwise in view of the allegations in the defence it would have been forced to decide whether or not to join the former legal advisors which would have radically altered the structure of this case and its ultimate trial. That has been removed for the moment but for the reasons set out above the Claimant succeeds on its application.