XCHRX CANON KABUSHIKI KAISHA v. GREEN CARTRIDGE COMPANY (HONG KONG) LIMITED AND ANOTHER

1993 No. A7844

HEADNOTE

Discovery Intellectual Property cases - In normal limited to documents relating to specimen infringement - Discovery as to quantities and prices relevant only on enquiry as to damages - British Leyland Defence - need to allow further discovery limited so as not to cause unnecessary hardship

1993, No. A7844

HEADNOTE

This was an action for infringement of patent and copyright. The action concerned the manufacture of replacement cartridges for laser printers. There were 5 patents in issue and questions of infringement and invalidity had to be decided in respect of all. In respect of copyright there were a large number of drawings but the only issue which fell to be decided at this stage was the question of whether the Defendants were entitled to rely on the "spare parts" defence otherwise known as the British Leyland defence. An index is included in the judgment which sets out the main topics dealt with.

Held:

1. It was necessary to give a liberal construction to the Registration of Patents Ordinance since its wording could not be construed strictly.

2. That 3 of the patents were valid and infringed.

3. That one of the patents was invalid for obviousness.

4. That the fifth patent was partially valid and that the claims that were valid would be infringed if the patent was amended.

5. That the British Leyland doctrine did not apply to the facts of this case since the Defendants were going beyond the boundaries of what was permitted. The doctrine should not be extended to encompass the manufacture of complete cartridges.

6. The Defendants were not entitled to rely on the defence of innocence.

1993 No. A7844

IN THE SUPREME COURT OF HONG KONG

HIGH COURT

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D E C I S I O N

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1. This is an application which relates in part to discovery and in part to question of interrogatories, but most importantly it really revolves around the question of discovery and quantities. Before going to the facts of this case, I should say at this stage that I am concerned in any application to limit discovery as much as possible. Discovery can be or can become extremely oppressive and difficult. It can add enormously to the cost of litigation and produce very little or no assistance in determining the issues.

2. Normally in an action concerning infringement of patents, trademarks, copyright and the like, discovery relating to quantities of items which have been sold by the alleged infringer is very limited at the stage prior to the Court holding liability. The usual course is that the only discovery given is of manufacture and sale in relation to the specific item(s) identified in the particulars of infringement which is (are) alleged to be an infringement. The question of quantities of manufacture of identical items and the prices of those sales are usually not dealt with on discovery prior to trial, but only on the enquiry for damages. What the Court decides is whether the specifically identified item(s) is or is not an infringement. If it decides that the identified item(s) is an infringement then it is for the person conducting the enquiry as to damages to assess how many other such items have been manufactured or sold or whatever.

3. This case is a case of alleged infringement of patents and copyright. The items involved relate to cartridges for printers. There are four and very likely five patents which are going to be involved in questions of both infringement and validity and there are something, I am told, in the region of 110 parts in the cartridges which are alleged to be infringements of the Plaintiff's drawings.

4. The Defendant has raised what for want of a better catch phrase can be described as a British Leyland defence. It is summarized in para. 15 of the Defence which says:

"Further, or in the alternative, and without prejudice to the matters pleaded in paras. 11 to 14 inclusive hereof

(a) the 1st Defendant was manufacturing, assembling, offering and exposing for sale, selling and/or distributing its process cartridges in Hong Kong as spare and replacement parts for the repair and/or continued functioning of the printers made sold and/or supplied by the Plaintiff,

(b) the 1st Defendant was manufacturing, assembling, offering and exposing for sale, selling and/or distributing assemblies, sub-assemblies and/or other component parts for process cartridges in Hong Kong as spare and replacement parts for the repair and/or continued functioning of the process cartridges and/or printers made, sold and/or supplied by the Plaintiff.

In the premises the Plaintiff is not in law entitled to enforce any alleged copyright against the Defendants or either of them."

5. In so far as para. 15(a) is concerned, there is little difficulty as regards this application. The question which the Court will be faced with is whether the manufacture and so forth of the cartridges constitutes a repair of the printer and that is a matter which can be gone into without considering quantities.

6. In para. 15(b), the matter causes this difficulty. First of all because, as has become clear as a result of the affidavits which were filed in the interlocutory injunction proceedings, the 1st Defendant carries on its business by stripping down old cartridges, servicing the parts and then later reassembling cartridges. That may be done with or without a greater or lesser number of other parts or new parts. So first of all there is a question of how many new parts to how many old parts are likely to be in any one cartridge. But secondly, the Plaintiff considers that it is relevant to go into the question of whether particular parts of the cartridges can be regarded as the equivalent of an exhaust pipe as in the British Leyland case. There the item was regarded as a replaceable part which was likely to wear out during the course of the life time of the car.

7. This type of defence is a relatively new type of defence. It has not been examined in a great number of cases. It seems to me that the Plaintiff is entitled to counter these defences in the best way it seems to the Plaintiff to be viable and the information which the Plaintiff requests is really two fold. First of all it wishes to know which spare parts have actually been sold to outside entities, so that it can determine which are really genuine spare parts in the sense of an exhaust pipe type of situation, and secondly, it may well wish at the trial to go into the question of the relative quantities of parts which are in any cartridge.

8. The discovery which has been asked for consists of documents including but without limitation sales invoices and accounting records and documents passing between Green Cartridge Company Limited and either the 1st Defendant regarding the quantity of manufacture and sale of the Defendants' cartridge. The definition section of the request makes clear that the Defendants' cartridge relates to parts as well as the completed cartridge. If that discovery was gone into fully, it seems to me that it may well cause undue hardship to the Defendants and I wish if at all possible to avoid that. What the parties need to do is to have a decision on the merits of the case and not to spend large amounts of time digging out documents which at the end of the day, the Court is hardly likely to look at and are likely to become otiose to the whole case. The Defendants however said that they would prefer, if the choice were given, to provide discovery which would merely mean that they have to produce the documents rather than answer interrogatories of the numbers of 65 to 68, because that would entail them having to do a great deal more work over and above the discovery. The interrogatories are as follows:-

"65. How many of each of the parts of the Defendants' cartridges have been made by or on behalf of the Defendants since October 1991?

66. How many such parts have been sold by the Defendants as parts as distinct from components of complete cartridges or cartridges in SKD form?

67. How many of each of the parts of the Defendants' cartridges have been used by the Defendants to repair or replace worn-out parts in EP-S cartridges or the Defendants' cartridges?

68. What use has been made of the said parts not sold pursuant too the answer in Question 66 or used for repair or replacement pursuant to the answer in Question 67?"

9. It seems to me that what the Plaintiff requires is details of the quantities of the Defendants' cartridges and parts which have been (a) used and (b) sold by the 1st Defendant. It seems to me that if they have that information they should have what they need to mount the argument. I realize that it will cause the 1st Defendant or the Defendants inconvenience to produce this information I feel that I should give the option of producing that information as information and verifying it on affidavit or alternatively producing the relevant documentation as a matter of discovery. What I propose to do is to make an order which will cover that, and allow the 1st Defendant time to do it. If there are difficulties then the matter can be brought back to me again in six weeks or so, after a suitable time has been given, and alternative arrangements can be considered. Once the Plaintiff has seen that information if it requires any further information then that can be considered at that stage. At the moment, it seems to me that if that information is provided that should be sufficient.