Key Facts
- •Insulet Corporation (Claimant) sued Menarini Diagnostics Limited, A. Menarini Diagnostics Srl, and EOFlow Co Ltd (Defendants) for patent infringement.
- •EOFlow manufactures an insulin pump (GlucoMen Day Pump) allegedly infringing Insulet's Omnipod patents.
- •Menarini Italy is EOFlow's exclusive distributor in 17 European jurisdictions, including the UK, and appointed Menarini UK for UK sales.
- •Insulet obtained permission to serve EOFlow (out of jurisdiction) for joint tortfeasorship based on common design or procurement of infringement.
- •EOFlow challenged the jurisdiction based on the absence of a 'serious issue to be tried' regarding joint tortfeasorship.
- •The court considered the draft amended particulars of claim, focusing on the 390 Patent infringement.
- •Proceedings against Menarini UK and Menarini Italy were stayed pending trial on validity and infringement.
Legal Principles
Serious Issue to be Tried
Lenovo v InterDigital [2024] EWHC 1036 (Pat), Kawasaki Kisen Kaisha Ltd. v James Kemball Ltd. [2023] EWCA Civ 33, Tesco Stores Ltd. v Mastercard Incorporated [2015] EWHC 1145 (Ch), Easyair v Opal [2009] EWHC 339 (Ch)
Liability as a Joint Tortfeasor (Common Design)
Lifestyle Equities v Ahmed [2024] UKSC 17
Liability as a Joint Tortfeasor (Procuring Commission of a Tort)
Lifestyle Equities v Ahmed [2024] UKSC 17
Outcomes
EOFlow's application to set aside the order granting permission to serve out of the jurisdiction was dismissed.
The court found a serious issue to be tried regarding EOFlow's joint tortfeasorship, based on both 'common design' and 'procurement' arguments. The evidence, including the exclusive distribution agreement and marketing materials, supported a finding of a common design. While communication isn't strictly required for procurement, the court inferred likely communication due to the comprehensive agreement.
Permission to appeal was refused.
The court rejected EOFlow's argument that the decision would create a precedent where any manufacturer with an exclusive distribution agreement automatically becomes a joint tortfeasor. The court's decision was based on a multifactorial assessment, not solely on the existence of the agreement.