FNM Corporation Ltd v Drammock International Ltd & Anor, Court of Appeal - Patents Court, June 15, 2009, [2009] EWHC 1294 (Pat)
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FNM Corporation Ltd v Drammock International Ltd & Anor, Court of Appeal - Patents Court, June 15, 2009, [2009] EWHC 1294 (Pat)
Neutral Citation Number: [2009] EWHC 1294 (Pat)Case Nos: HC08CO0502, HC08C03115IN THE HIGH COURT OF JUSTICECHANCERY DIVISIONPATENTS COURTRoyal Courts of JusticeStrand, London, WC2A 2LLDate: 15 June 2009Before :THE HON MR JUSTICE ARNOLD- - - - - - - - - - - - - - - - - - - - -Between :- - - - - - - - - - - - - - - - - - - - -- - - - - - - - - - - - - - - - - - - - -George Hamer (instructed by Innovate Legal) for the ClaimantAlastair Wilson QC and Matthew Kime (instructed by Ormrods) for the DefendantsHearing dates: 31 March, 1-3, 23-24 April 2009 Redacted - - - - - - - - - - - - - - - - - - - - -JudgmentMR JUSTICE ARNOLD : Introduction1. FNM Corporation Ltd (``FNM''), which trades as FranceMed Pharma, is the proprietor of European Patent (UK) No, 0 673 403 (``the Patent''). FNM claims that the Patent has been infringed by Drammock International Ltd (``Drammock'') and LEC (L'pool) Ltd (``LEC''). The defendants do not dispute that they have infringed the Patent if it is valid, but counterclaim for revocation of the Patent and in respect of threats made by FNM. In addition FNM claims that LEC has acted in breach of contract. LEC was formerly a supplier to FNM and supplied the allegedly infringing products to Drammock. By the conclusion of the trial an apparently simple case had generated a surprising number of issues even though the defendants did not pursue two pleaded defences under sections 62(1) and 64 of the Patents Act 1977. I am concerned that the costs of this litigation will have been out of all proportion to what is at stake.The background to the claims2. FNM is a small company owned by Mrs Nelly Kamel Malek (née Rizk) and her husband Mr Fawzi Malek, who are the directors of the company. Mrs Malek is the inventor of the patented invention. In her evidence she explained how she perceived the need for a cooling spray for various purposes, and after failing to find any satisfactory product on the market came up with the idea of a water and dimethyl ether (``DME'') aerosol. It is relevant to note that at that time she did not have the knowledge and experience of the person skilled in the art to whom the Patent is addressed, since she was an electrical engineer by training. The product she devised has been marketed by FNM since 1993 under the name Magicool. From 1999 until 2008, Magicool was manufactured for FNM by LEC.3. For some years prior to 2006 Drammock had marketed a water and compressed nitrogen cooling spray aerosol under the name Cooling Mist. This product was manufactured by North West Aerosols Ltd (``NWA''). NWA was acquired by LEC in 2006, but shortly afterwards went into liquidation. In 2007 LEC commenced manufacturing Cooling Mist for Drammock, but changed the propellant from nitrogen to DME. This led to FNM bringing claims first against Drammock and subsequently against LEC. As I understand the position, LEC has stopped manufacturing, and Drammock has stopped selling, DME-based Cooling Mist. The dispute concerns 615,312 units of DME-based Cooling Mist manufactured by LEC for Drammock. It is only fair to FNM to say, however, that prior to and even during trial the defendants put forward figures for the quantities involved which were lower (indeed, to begin with, substantially lower) and inaccurate. The witnesses4. FNM's expert witness was Montfort Johnsen. Mr Johnsen is a highly experienced and distinguished aerosol development technician. He obtained an MSc in Chemistry from the University of Colorado in 1949. From 1953 to 1983 he held a series of increasingly senior technical positions at Continental Filling Corp, now KIK Custom Products Inc, the world's largest contract filler of aerosol products. Since 1983 he has acted as a consultant. Since 1987 he has been the Technical Editor of the leading aerosol trade journal Spray Technology & Marketing. He has written or co-authored five books on aerosol technology including the Aerosol Handbook. The Aerosol Handbook, the second edition of which was published in 1982, was a, if not the, standard textbook in the field, referred to at least by some as the ``bible'' of the industry. He has also published over 300 articles. In 1997 he became the Chairman of the world's largest aerosol trade association, the CSMA.5. Mr Johnsen was a clear and helpful witness. It is no criticism of him that he was a curious choice of expert for FNM. The reason for this that, as he made clear in his first report and confirmed in cross-examination, he was firmly of the opinion that the patented product was not a good idea. Even after reading the Patent and learning of the commercial exploitation of Magicool, he had a number of serious concerns about the safety of the product. I shall return to this point below.6. A separate point is that Mr Johnsen's perspective was that of the industry in the USA. This is relevant because, as he said in his first report and in cross-examination, DME was not popular in the USA prior to about...See the full content of this document
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