Litigation win – Icescape v Ice-World
Our client Icescape Limited, one of the UK’s largest temporary ice rink companies has won an across the board victory in a hard fought case in the Patents Court against Ice-World, Europe’s largest temporary ice rink supplier.
The judgement by Deputy Judge Baldwin QC (not yet available on BAILII but hosted here) is a good read for those with an interest in patent infringement matters, applying established UK authority on claim construction and priority to straightforward mechanical subject matter. The case also has an interesting commercial background, being an example of a successful threats action and demonstrating the great speed at which UK courts can move, particularly under the Shorter and Flexible Trial Scheme.
Icescape had previously leased temporary ice rink equipment from Ice-World for use in its own business until 2015 when it decided to design and manufacture its own ice-rinks for the 2015-2016 winter season, taking advice from our firm.
In the autumn of 2015 Ice-World alleged through its Dutch lawyers that Icescape’s design infringed its European Patent 14627555 B1 for a “Cooling member for a mobile ice rink” (the “Patent”). The Patent underpinned Ice-World’s own ice rinks which were hitherto a market leading design.
Through our firm and its solicitors (Clarke Willmott LLP) Icescape wrote to Ice-World’s Dutch lawyers denying that Icescape’s own design infringed the Patent. Full details of Icescape’s own rink design were disclosed. Ice-World was also warned of the UK’s provisions on unjustified threats. Nothing further was heard from Ice-World. Icescape’s own ice rinks were then manufactured, installed and operated around the UK at over twenty sites during the 2015-2016 winter season, including at the London Eye.
The dispute between Icescape and Ice-World exploded in May 2016 after Ice-World issued a large number of threatening letters to Icescape’s customers in the UK. Ice-World’s letters alleged that the ice rinks Icescape’s customers had hired infringed the Patent and threatened them with legal action including large claims for damages should they use Icescape’s ice rinks in the future. Ice-World demanded that Icescape itself should undertake not to supply any of its rinks to anyone in the future and demanded an immediate payment of over €1m in damages.
The letters issued by Ice-World included a copy of an infringement opinion from Ice-World’s UK patent attorneys. The opinion stated that Icescape’s ice rinks infringed the Patent.
The contracting season for temporary ice rinks typically occurs between May and September of each year. The effect of Ice-World’s threatening letters was catastrophic with customers cancelling contracts, demanding indemnities and many even refusing to do business with Icescape.
Proceedings were issued by Icescape in the Patents Court on 3 June 2016 against Ice-World International BV, Ice-World UK BV and both companies’ managing director, Steven Bottema under the Shorter and Flexible Trial Scheme. An order for an expedited trial was granted by Mr Justice Arnold on 4 July 2016 and the action proceeded to trial on 14-16 December 2016. Icescape’s case was prepared, issued and tried in just over six months.
The proceedings issued against Ice-World sought a declaration of non-infringement concerning the Patent with regard to Icescape’s own ice rink, a declaration of invalidity in respect of the Patent and an order for its revocation, an injunction with regard to Ice-World’s groundless threats and an order for the payment of damages by Ice-World for losses suffered by Icescape as a consequence of Ice-World’s groundless threats.
Judgment was handed down in the Patents Court on 23 January 2017. Icescape won the action and succeeded on every single head of its claim including the revocation of the Patent. A disposal hearing has been listed for 10 February 2017 which will deal with the final order and the question of costs. Damages will be assessed at a further hearing in due course.
Points of note
In terms of infringement, the judgement is a good example of how the UK’s established authority on claim construction is applied in practice to mechanical cases (see paragraphs 43 to 59).
The validity case relied entirely on prior use during the priority year of the Patent (discovered by our firm to our great glee). Ice-World admitted that the Patent would be invalid if the priority claim of the Patent failed. Ice-World’s arguments in favour of valid priority relied heavily on the common general knowledge of the skilled person, amounting to the suggestion that a priority document implicitly incorporates and therefore discloses all the common general knowledge in the art. This was emphatically rejected in the judgement based on established authority (see paragraphs 36 to 42).
Finally, with regard to the threats action, Ice-World pleaded the defence under Section 70(2A) of the Patents Act, to the effect that Ice-World did not know, and had no reason to suspect, that the Patent was invalid. Ice-World relied on the validity opinion prepared by Ice-World’s patent attorneys, which had found the Patent to be valid and infringed in April 2016. However, this was given short shrift in the judgement (paragraphs 65 and 66), not least because the person responsible for sending the threatening letters did not give evidence as to whether or not he knew or suspected the Patent was invalid in any material respect.