Key Facts
- •NOCO and Carku are rival manufacturers of lithium-ion batteries.
- •NOCO was the proprietor of a patent (GB 2 257 858).
- •Carku launched proceedings for a declaration of non-infringement and invalidity of NOCO's patent, and relief against unjustified threats.
- •NOCO counterclaimed for infringement.
- •The court found the patent invalid for obviousness.
- •NOCO made numerous complaints to Amazon via its 'Infringement Form' regarding Carku products allegedly infringing the patent.
- •Amazon removed Carku's products from sale following NOCO's complaints.
- •Carku claimed substantial sales losses due to the removal.
Legal Principles
A communication contains a 'threat of infringement proceedings' if a reasonable person in the recipient's position would understand that a patent exists and proceedings are intended to be brought for its infringement.
Section 70 of the Patents Act 1977
A threat is not actionable if the allegation is of primary infringement or if made to a primary infringer.
Section 70A of the Patents Act 1977
A threat is not actionable if it is not an express threat and is contained in a permitted communication (made for a permitted purpose, with all necessary information, and reasonably believed to be true).
Section 70A(5) and 70B of the Patents Act 1977
In interpreting communications, a reasonable person's understanding with knowledge of the circumstances at the date of the communication is crucial.
Best Buy Co Inc v Worldwide Sales Corporation Espaňa SL [2011] EWCA Civ 618
When considering a sequence of communications, they must be looked at as a whole.
Brain v Ingledew Brown Bennison and Garrett (No 3) [1997] FSR 511
Outcomes
The appeal was dismissed.
The court found that NOCO's communications to Amazon amounted to threats of infringement proceedings. The requests for removal of Carku's products, coupled with assertions of infringement, were considered veiled threats, even considering Amazon's IPR policy and procedures.