SILVER ACHIEVER INVESTMENTS LTD v. FRANK JOSEPH PRINEPPI AND OTHERS

HCCW 203/2016 & HCA 1377/2016

(HEARD TOGETHER)

[2023] HKCFI 2699

HCCW 203/2016

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

COMPANIES WINDING-UP PROCEEDINGS NO 203 OF 2016

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IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 1377 OF 2016

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(HEARD TOGETHER)

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J U D G M E N T

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Introduction

1.  Between September and November of 2022 I heard the trial of two Actions concerning Remote Automation Monitoring Limited (“Company”). Unfortunately, Ms Cheung who appeared for the Petitioner/Plaintiff, Silver Achiever Investments Limited (“Silver Achiever”) caught COVID during the trial, which disrupted its progress. This is the Judgment in both Actions[1].

The Company and the Joint Venture

2.  The Company was formed in September 2014 between Silver Achiever (holding 8.2%) and Guilden International Limited (“Guilden”) (holding 90.8%). Silver Achiever was controlled by Lu Wing Chi Jesse (“Jesse”) and Lambert Lu (“Lambert”) Jesse’s Son. Guilden’s sole shareholders are Frank Prineppi (“Frank”) and his Wife Barbara Halstead (“Barbara”) together the “Prineppis”. The Prineppis were introduced to Lambert in 2014 by a mutual connection, David Runciman (“David”). David had known the Prineppis since 2006. He was an executive director of Asian Growth Properties Limited, a subsidiary of SEA Holdings Limited (“SEA”), which is listed on the Main Board of the Hong Kong Stock Exchange. Jesse and Lambert were the Chairman and executive director of SEA respectively.

3.  Frank is an electronics engineer and holds himself out as having extensive experience of design and development of electronic products including products used in the oil exploration and extraction process. In 1987 the Prineppis incorporated in Hong Kong Capricorn Electronics Limited (“CEL”), which is 99% owned by Guilden; Frank owning one share. CEL developed electronic products and launched start-ups in the USA. Frank describes the products with which the Actions are concerned in [4]–[5] of his witness statement:

“4.

In 2011, I developed a particular type of cellular M2M communications controller application that enables users to track, monitor and control measuring devices from remote locations, such as oilfields, thus avoiding the need for the devices to be visited personally on site by field engineers. Several unrelated products and companies were also established by Barbara and myself for the purpose of exploiting this basic controller concept and some of these companies were sold to third parties together with the specific technology relating to the commercial application concerned. Barbara has been involved as Chief Financial Officer (‘CFO’) in all our companies since approximately 1986.

5.

Of particular relevance to these proceedings is an application that I developed in about 2013 for use in remotely controlling chemical dosing pumps for the oil and gas industry. Such dosing pumps are used to deliver chemicals down oil wells and into pipelines to prevent corrosion, mitigate toxic gases, minimize paraffin and algae build-up, and to generally maintain or stimulate oil production. This application was developed under the brand ‘ENVOY’.”

4.  The introduction led to the establishment of a joint venture to market and sell products for use in the oil industry. It is Silver Achiever’s case that at a meeting on or about 5 August 2014 the Prineppis made various representations to Jesse (Lambert was not involved at this time) to induce Silver Achiever to invest in the Company. The representations are pleaded in [20] of the Amended Points of Claim. They are said to have been as follows:

“a.	Frank and Barbara were seeking investors to develop new products to put into production and to update existing designs of current products which were being used in the oil and gas and water industries;
b.	A corporate vehicle controlled by Frank and Barbara held the intellectual property rights in certain products and software which were then known as the Envoy line of products (the ‘Envoy Products’) and the source code to various software used in the Envoy Products (the ‘Envoy Software’) (collectively the ‘Envoy Products and Software’).
c.	The intellectual property rights in the Envoy Products and Software were protected under Hong Kong law by way of copyright and lay-out designs;
d.	The intellectual property rights in the Envoy Products and Software were the sole assets of the said corporate vehicle and could be sold/licensed to third parties for significant sums given that they were cutting edge technology and would result in substantial cost savings to those in the water and oil and gas industries who would use the Envoy Products and Software.”

5.  It is alleged that Silver Achiever relied on these representations in deciding to invest. By an agreement for share subscription and a convertible loan and shareholders agreement dated 14 October 2014 (“1^st JVA”) Silver Achiever (i) subscribed for 100 shares for US$5,000 in the Company, (ii) made an interest free loan to the Company of US$500,000, which was convertible into additional shares at a price of US$5,000 per share.

6.  Recital B to the 1^st JVA states that the Company is the sole legal beneficial owner of the “Company Intellectual Property and Assets” which is described in Schedule 3. “Company Intellectual Property and Assets” are defined in clause 1.1, which contains the definitions used in the 1^st JVA, and means “the intellectual property of the Products and related assets, which include all intellectual property and industrial property rights and all other proprietary rights, including, without limitation, patents, patent rights, copyrights, works of authorship, mask work rights, moral rights, trademarks, trade secrets and all registrations, applications, renewals, extensions and restorations of all of the foregoing and assets developed oblique owned by the Company and is more particularly described in schedule 3”. Schedule 3 lists the products it was intended the Company deal in, which included the following:

(1)  ACC Pump Batch Controller;

(2)  IPC Pump Controller;

(3)  PT100 Pump Timer;

(4)  PTS500;

(5)  WiTank Sensors;

(6)  LT-4 Tank Monitor;

(7)  All derivative products developed based upon the intellectual property of the aforesaid products developed for the pumping, chemical and well dosing business.

(“Products”)

7.  Paragraph (b) to Schedule 3 states that in relation to the Products the intellectual property covered by the 1^st JVA include “All Intellectual Property (including, for the avoidance of doubt, software programs, source code data, manuals, production files, graphic imaging) used in relation to production of the Products”. I shall refer to the software programs, source code data, manuals, production files, graphic imaging as “Software” and intellectual property rights in the Company Intellectual Property and Assets and the Software as “IP Rights”.

8.  The 1^st JVA contained comprehensive warranties by the Prineppis including the following in clause 9.1(f), namely, that the Company is the sole legal and beneficial owner of the Intellectual Property and Assets and that they are free of encumbrances. Clause 9.2 provides that the Prineppis agree and acknowledge that Silver Achiever relied on the warranties when entering the Agreement. The warranties were confirmed by a certificate signed by the Prineppis in their personal capacities and on behalf of the Company and issued pursuant to clause 2.6(b) of the 1^st JVA.

9.  It is, therefore, quite clear that the Prineppis warranted that as at 14 October 2014 the Company owned all the legal and beneficial interests in the Company Intellectual Property and Assets and acknowledged that Silver Achiever relied on the warranties when deciding to enter the 1^st JVA. On the face of the 1^st JVA the Company’s ownership of the Company Intellectual Property and Assets was an important component of the commercial agreement encapsulated in the 1^st JVA. This is not disputed by the Prineppis.

10.  On about 1 July 2015 the Prineppis informed Jesse that the Company wanted to carry out a second round of funding for the development of its products in response to customer demand relating to controlling, monitoring and remote automation devices to be used in field operations. As, Silver Achiever contends, a further inducement to it to invest further monies in the Company, the Prineppis informed Silver Achiever that three patent applications[2] had been filed in the UK and the USA in the Company’s name to protect inventions developed by it for delivering chemicals to a well head and that such patents would enable the Company to charge a premium for the goods it sold or licensed which incorporated the patent. Silver Achiever says that in reliance on those further representations by an agreement for share subscription and a second convertible loan dated 30 July 2015 (“2^nd JVA”) executed by Silver Achiever, the Company, the Prineppis and Guilden, Silver Achiever agreed to make a further investment in the Company.

11.  As in the case of the 1^st JVA, the 2^nd JVA included a warranty (in this case in clause 4.1(f), which is identical to clause 9.1(f) of the 1^st JVA) that the Company was the sole legal and beneficial owner of the Company Intellectual Property and Assets and that they were free from any charge, mortgage or encumbrance. As in the case of the 1^st JVA the Prineppis signed a certificate confirming the warranties were true.

12.  Pursuant to the 2^nd JVA, Silver Achiever (i) subscribed for 61 shares in the Company for the sum of US$250,000 and (ii) made a further interest free loan to the Company of US$250,000.

13.  Also on 30 July 2015, an agreement amending the 1^st JVA was signed (“Amendment Agreement”) by Silver Achiever, the Company, the Prineppis, Guilden, David and Pipeline Global Ventures Limited (“PGV”). PGV was held 90.8% by Guilden, 8.2% by Silver Achiever and 1% by David. PGV held 100% of the shares of Remote Automation Monitoring USA, Inc. (“RAM US”), which was incorporated in Texas in December 2014. The Amendment Agreement amended the terms for the 1^st JVA by PGV acceding to the terms of the 1^st JVA as if it were a party to it (say the Prineppis).

The alleged misrepresentations and breach of warranties

14.  It is Silver Achiever’s case that the ownership of the Company Intellectual Property and Assets was materially different to that recorded in the 1^st and 2^nd JVA. Central to the determination of this claim is a further agreement, what the Prineppis say was also executed on 14 October 2014 (the date the 1^st JVA was signed), namely, Technology Purchase Agreement (“TPA”) signed by Frank and the Company and to which CEL was also a party. The effect of the TPA was to record a purchase of assets by the Company from Frank. The assets which were the subject of the TPA were the IP Rights in the Products. Pursuant to the TPA, Frank purported to sell the IP Rights in the Products to the Company for US$9,000,000 worth of share equity in the Company. Silver Achiever says that Frank was not, however, the owner of the IP Rights. It pleads its case as follows in [40]–[41] of the Amended Statement of Claim.

“40.	(1)	The copyright works and lay-out designs relating to the RAM Products were created by two individuals named Zhang Ming and Long Jun between 2014 to 2016. Zhang Ming and Long Jun were at all material times either employees of CEL or (during periods when they were not employed as employees by CEL) served as contractors providing services to CEL.
	(2)	By virtue of the aforesaid, at the time of signing the TPA, the copyright and lay-out designs in the RAM Products were owned either by: (i) CEL (in the event that Zhang Ming and Long Jun created the works whilst employees of CEL); or (ii) Zhang Ming and Long Jun (if at the time when the works were created they were contractors of CEL).”

15.  Silver Achiever further asserts that for the following reasons the Prineppis caused the copyright and lay-out designs relating to the Products to be transferred to a company controlled by them (CEL) rather than to the Company.

“41.	(1)	On 14 April 2016, each of Zhang Ming and Long Jun, as assignors, purportedly executed an ‘Intellectual Property Assignment Agreement’ (the ‘IP Assignments’) in favour of CEL, purportedly assigning to CEL all software intellectual property rights developed in the RAM Products whilst they were employees and/or contractors of CEL.
	(2)	When Frank and Barbara procured the assignments from Zhang Ming and Long Jun, they did so knowing that the intellectual property rights which were the subject of the IP Assignments ought to have belonged to the Company (as warranted by Frank and Barbara in the 1st and 2nd JV agreements, as pleaded in paragraphs 23-25, 29-30 above).
	(3)	By asking Zhang Ming and Long Jun to execute the IP Assignments in favour of CEL instead of the Company, Frank and Barbara have misappropriated and/or misapplied assets belonging to the Company (or alternatively assets which ought to have belonged to the Company) by having them assigned to another company of which they are the beneficial owners.
	(4)	Such action amounted to a breach of the Directors’ Duties that Frank and Barbara owed to the Company (including the duty not to misapply the Company’s assets; the duty of not placing their own interests in conflict with those of the Company; and the duty not to benefit themselves at the expense of the Company).”

16.  Silver Achiever also asserts that the Prineppis had not, as they had represented, filed patent applications in the UK and USA in the Company’s name to protect inventions developed by the Company for delivering chemicals to a well head. In fact, asserts Silver Achiever, Frank had applied to register in his own name the following three patent applications:

(1)  On 30 June 2015, UK Patent Application Number GB1600848.4;

(2)  On 30 June 2015, UK Patent Application Number GB1511423.4; and

(3)  On 2 July 2015, US Patent Application Number 14790553.

(“Patents”). Silver Achiever pleads in the Amended Points of Claim that it believes that the Patents relate to the Products.

17.  What Silver Achiever believes were misrepresentations and breaches of warranties resulting from the way the ownership of the Company Intellectual Property and Assets and the Patents had been dealt with, came to light in January 2016 when Lambert become involved in the Company’s affairs. On 19 January 2016 he asked Barbara to explain why the Patent applications had been filed in Frank’s name. Barbara replied that this was done because it was not possible to file them in a company’s name. Silver Achiever says that this was wrong and that it had been possible since 16 September 2012 in the United States Patent Office (35 USC [118]) and is expressly permitted by section 7(2)(b) of the Patents Act 1977. Silver Achiever pleads that filing the patent applications in his own name was a breach of Frank’s fiduciaries as a director of Company.

18.  Silver Achiever carried out further investigations into ownership of the IP Rights in the Products as at the dates when the 1^st and 2^nd JVAs were executed. Silver Achiever says that as a result the matters I have described in [15]–[16] came to light. These matters, argues Silver Achiever demonstrate a breach of the warranties in the 1^st JVA and were unfairly prejudicial to Silver Achiever as it would not have invested in the Company if it had known that the Company Intellectual Property and Assets were not owned by the Company and, also, that it reduced the value of its shareholding.

19.  As a consequence of Silver Achiever’s complaints, on 27 March 2016 Frank sent an email to Lambert and Jesse stating that he was instructing his patent attorney, Richard Halstead, to assign the Patents to the Company. On 6 April 2016 Frank executed an “exclusive licence agreement”.

20.  On 23 May 2016 Silver Achiever’s solicitors sent a letter to the Prineppis and Guilden informing them that the warranties contained in the 1^st and 2^nd JVA which state that the Company Intellectual Property and Assets were held by the Company were false. The letter demanded that all IP Rights be transferred to the Company or it would commence litigation. On the same day Frank forwarded to Silver Achiever an “assignment agreement” dated 19 May 2016 assigning the Patents from Frank to the Company.

21.  On 12 August 2016, the Prineppis’s solicitors sent to Silver Achiever’s solicitors an agreement entitled “Technology Transfer” executed by CEL and Frank on 22 September 2014 (“Asset Purchase Agreement” or “APA”) in which CEL agreed to sell the IP Rights of the Products to Frank for US$1.5 million. This was the first time that the Asset Purchase Agreement had been referred to by the Prineppis and Silver Achiever alleges that it can be inferred that it was signed in 2016 and backdated to 22 September 2014.

22.  Silver Achiever alleges that by failing to arrange for the IP Rights in the Products to be validly assigned to the Company the Prineppis acted in an unfairly prejudicial manner, failed to act bona fide and placed their own interests in conflict with those of the Company.

23.  The Prineppis’s explanation of the way ownership of the IP Rights were dealt with is complicated. It is put thus in the Defence:

“20.	The concepts for the PCB hardware of the early Envoy Products (‘Envoy’ being a brand belonging to CEL) were created in about 2012 by Frank and developed by him together with a contract hardware designer called Wei Qi Rui who carried out Frank’s instructions relating thereto. All such hardware and products were so created on the understanding and with the intention that all the copyrights relating thereto would be owned by CEL or by Frank on behalf of CEL. To the extent that they may not already have been owned by CEL, the copyrights and certain other rights resulting from Wei Qi Rui’s work were assigned to CEL by virtue of assignments in writing, constituted by purchase orders issued by CEL and counter-signed by Wei Qi Rui, on divers dates from 14th December 2010 until 9th July 2014. The said concepts were embodied in the Envoy, IPC and ACC products that existed at the time of the execution of the 1st JV Agreement on 14th October 2014. Wei Qi Rui’s role was to use a CAD program to prepare a ‘schematic’ for each circuit diagram which Frank would then check, require modifications for and, if appropriate, approve as the final version. Thereafter, Wei Qui Rui would use a CAD program to generate PCB layout masks for use in finished products.
21.	Shortly after the execution of the first JV Agreement, a contract electronics engineer called Zhang Ming Ming was engaged as a replacement for Wei Qi Rui to develop further refinements to the designs of the IPC and ACC products. Zhang Ming Ming worked under the directions of and in conjunction with Frank and all products so developed were created on the understanding and with the intention that all the copyrights relating thereto would be owned by the Company. To the extent that they may not already have been owned by CEL, the copyrights and certain other rights resulting from Zhang Ming Ming's work were assigned to CEL by virtue of assignments in writing, constituted by purchase orders issued by CEL and countersigned by Zhang Ming Ming, on divers dates from 4th June 2014 until 15th April 2015.
22.	The early IPC and ACC designs produced by Frank and Zhang Ming Ming were discontinued in about early 2015 because of the changeover from 2G to 3G telecommunications in the USA. All other derivative products to be marketed and sold by the Company were developed during the period after 14th October 2014 by Frank together with Zhang Ming Ming working as an employee of CEL under the directions of Frank for and on behalf of the Company. When Zhang Ming Ming and another contractor called Long Jun were permanently employed by CEL, all relevant intellectual property rights necessarily belonged to the Company by virtue of the R&D Agreement between CEL and the Company dated 14th October 2014. Long Jun became a permanent employee of CEL from 6th January 2014 onwards and, in consequence, all intellectual property rights in works he created became vested in CEL from that date onwards. However, none of Long Jun's early works was relevant after he became a full-time employee as they had been superseded by newer designs. For the period after 14th October 2014, all intellectual property rights subsisting in works created for the Company were vested automatically in the Company by virtue of the R&D Agreement of that date.
23.	As to paragraph 41(1), it is admitted that Zhang Ming Ming and Long Jun executed IP assignments on 14th April 2016 in favour of CEL but it is averred that the assignments were effective instruments of transfer only to the extent, if at all, that such rights had not already been vested in CEL and subsequently the Company by virtue of earlier assignments in writing as explained in paragraphs 19 to 23 hereinabove and by virtue of the Asset Transfer Agreement and the TPA.
24.	Paragraph 41(1) is admitted but paragraphs 41(2), 41(3) and 41(4) are denied. The IP Assignments dated 14th April 2016 were executed for the sole purpose of trying to rectify any defects in title as perceived by the Petitioner and its solicitors, Messrs. Stephenson Harwood, even though they would have no legal effect, other than being confirmatory, for the reasons explained in paragraphs 19 to 23 hereinabove.
25.	As to paragraph 42, Frank, Barbara and Guilden admit that the patent applications referred to therein had been applied for in Frank’s own name. It is averred that this was done for the purpose of simplicity with the intention that any granted patent rights would be transferred to Company. This was in accordance with the usual advice of their patent attorney, Mr. Richard Halstead, whose practice for many years had been to file Frank’s patent applications in Frank’s own name as inventor, originally because US Patent Office procedures required (until fairly recently) all patent applications to be filed in the names of the inventors and not their employers or associated companies. In any event, the relevant patent applications were at all times filed and held by Frank on the Company’s behalf and, to the extent that the rights in and to the applications may not already have been vested in the Company, the title thereto has since been assigned to the Company in writing, as required under UK law, by means of an assignment dated 19th May 2016. Save as aforesaid, no admissions are made as to paragraph 42.
26.	As to paragraph 43, it is admitted that the Patents are covered by the said warranty as alleged to the extent that they cover the ‘Products’ as defined in schedule 3 of the 1st and 2nd JV Agreements.
27.	No admissions are made as to paragraph 44 save that it is admitted that, in an email dated 21 January 2016, Barbara stated that the patent applications had been filed in Frank’s name for the reason alleged. It is averred that the applications for the Patents had been filed in Frank's own name on the advice of Mr. Richard Halstead as pleaded in paragraph 25 hereinabove. As it is well known that start-up companies are especially vulnerable to failure, Mr. Halstead advised keeping IP assets out of the Company wherever possible. In any event, as the original patent applications referred to claimed priority in part from an application filed in Frank’s name before the JV agreements were signed, there was no question that the Company’s name could have been used instead.
28.	Paragraph 45 is denied. It is averred that the applications for the Patents in Frank’s own name were not, and were not intended to be, for his own use and benefit to the detriment of the Company and, indeed, such applications were held by Frank exclusively on the Company’s behalf with effect from 14th October 2014 onwards.
29.	Paragraph 46 is denied and paragraphs 19 to 23 hereinabove are repeated.
30.	Paragraph 47 is admitted and it is averred that the Exclusive Licence Agreement dated 6th April 2016 was executed instead of an assignment on the advice of Mr. Richard Halstead.
31.	Paragraphs 48 and 49 are admitted.
32.	Paragraph 50(1) is admitted and, in particular, it is averred that the Asset Purchase Agreement dated 22nd September 2014, transferring the relevant intellectual property rights to Frank, was in fact executed by CEL and Frank before the TPA was executed on 14th October 2014.
33.	As to paragraph 50(2), it is admitted that Frank and Barbara had been asked by the Petitioner’s solicitors to provide proof that the relevant intellectual property rights were owned by the Company but neither the Petitioner nor the Petitioner’s solicitors at any time explained, or sufficiently explained, the underlying reason for the request, nor did they clarify why the particular information requested was being sought, save that the position had to be ‘rectified’. Frank and Barbara answered all such requests truthfully, to the best of their knowledge and belief, but the Petitioner’s solicitors ignored requests that they contact Mr. Richard Halstead for assistance with their enquiries. The Asset Purchase Agreement was a document kept in CEL’s custody and had at all material times been held by CEL’s company secretary. Barbara had presented a copy of this document to Wendy Y.Y. Chan, company secretary of SEA Holdings Limited, for record pm-poses at the completion on 14th October 2014 but she refused to accept it, explaining that she was only concerned with documents that were to be executed at that meeting. Barbara again presented a copy of the Asset Purchase Agreement, to the replacement company secretary Dora Chow, in late November 2015 for record purposes but this offer was also refused.”

Claims in respect of allegedly unauthorised agreement and payments

24.  In addition to its complaint in relation to the ownership of the IP Rights in the Products, Silver Achiever also claims that the Prineppis mismanaged the Company and committed a number of other breaches of fiduciary duty.

“52.	The Company purportedly entered into the following contracts all dated 14 October 2014:
	a.	Management and Administrative Services Contract between the Company and CEL (‘Management Contract’);
	b.	Research and Development Services Agreement between the Company and CEL (‘R&D Agreement’);
	c.	Offer of Employment between the Company and Frank (‘Frank’s Employment Contract’);
	d.	Offer of Employment between the Company and Barbara (‘Barbara’s Employment Contract’);
	(collectively the ‘Unauthorised Agreements’).
53.	Pursuant to the Management Contract, the Company was obliged to pay CEL the sum of HK$53,500 per month for purportedly receiving management and administration services in respect of the handling of the day to day functions of the Company.
54.	Pursuant to the R&D Agreement, the Company was obliged to pay CEL the sum of HK$155,610 per month for purportedly receiving research and development services.
55.	Pursuant to Frank’s Employment Contract, the Company was obliged to pay him HK$100,000 per month plus a 13th month contractual bonus for purportedly acting as Chief Executive Officer of the Company.
56.	Pursuant to Barbara’s Employment Contract, the Company was obliged to pay her HK$100,000 per month plus a 13th month contractual bonus for purportedly acting as Chief Operating Officer of the Company.
57.	The Management Contract and the R&D Agreement were both signed by Barbara acting for and on behalf of CEL and Frank acting for and on behalf of the Company. The Petitioner was unaware of the existence of these two agreements nor had their consent been obtained prior to Frank and Barbara executing the agreements.
58.	Frank’s Employment Contract was signed by Barbara acting for and on behalf of the Company. The Petitioner was unaware of the existence of Frank’s Employment Contract nor had their consent been obtained prior to Frank executing the agreement.
59.	Barbara’s Employment Contract was signed by Frank acting for and on behalf of the Company. The Petitioner was unaware of the existence of Barbara’s Employment Contract nor had their consent been obtained prior to Barbara executing the agreement.
60.	The Petitioner infers that the Unauthorised Agreements were actually signed in 2016 and then backdated to 14 October 2014 because:
	a.	A meeting took place on 12 January 2016 between Lambert Lu, Barbara, David, and William. At this meeting, Barbara: (i) produced an allegedly executed version of the Management Contract and the R&D Agreement; and (ii) admitted that Frank and Barbara had failed to have such agreements evidenced in writing or properly pass resolutions to approve the agreements, and therefore such agreements required rectification.
	b.	In an email from Barbara to Lambert Lu dated 13 January 2016, Barbara attached an allegedly executed copy of Frank’s and Barbara’s Employment Contract, and stated that such contracts had been prepared for execution along with the other agreement documents.
	c.	In an email from Barbara to David dated 29 February 2016, Barbara attached an alleged ‘Agenda of the Board Meeting’ on February 29 2016, which stated in Item 3 that Barbara had prepared shareholder resolutions for the Petitioner to retroactively approve five contracts (including the Management Contract; the R&D Agreement; and the Employment Contracts of Frank, Barbara and Georgina).
61.	As pleaded in paragraph 7 above, CEL is owned by Frank and Guilden, and the ultimate shareholders of Guilden are Frank and Barbara. Thus, Frank and Barbara had a substantial interest in each of the Unauthorised Agreements.
62.	However, none of the Unauthorised Agreements were ever brought up for discussion and approval at any directors’ meeting or general meeting of the Company.
63.	Therefore, Frank and Barbara, in executing the Unauthorised Agreements, were in breach of their duties under:
	a.	Article 16 of the Original AA (if the documents were actually executed on a date between 3 September 2014 and 19 July 2015);
	b.	Article 16 of the Amended AA (if the documents were actually executed on a date after 19 July 2015);
	c.	section 536 of the Companies Ordinance (Cap. 622); and/or
	d.	common law (as pleaded in paragraph 15 above)
	to declare the nature and extent of their interest in the Unauthorised Agreement to the Company’s other directors and also its general meeting.
…
67.	In addition, as the remuneration which Frank and Barbara decided to pay themselves under their employment contracts was excessive, the receipt of the amounts as salary on a monthly basis amounted to a misappropriation and/or misapplication of the Company’s assets. The salaries stated in Frank’s Employment Contract and Barbara’s Employment Contract were considerably in excess of what the Petitioner would have agreed for Frank and Barbara to be paid (had the Petitioner been consulted on their terms of employment).
68.	(1)	From the general ledger provided by Frank and Barbara to the Petitioner (in respect of the period from 29 January 2015 to 31 December 2015), it also appears that Georgina Prineppi (the daughter of Frank and Barbara) (‘Georgina’) has been purportedly employed by the Company since September 2015, at a salary of HK$40,000/month and with reimbursement of expenses totalling HK$265,404.88 for the year ended 31 December 2015.
	(2)	However, Georgina’s employment contract has never been brought up for discussion and approval at any directors’ meeting or general meeting of the Company.
	(3)	This amounted to a further breach, by Frank and Barbara, of the duties pleaded in paragraphs 61-67 above are repeated mutatis mutandis.
69.	Moreover, from the general ledger provided by Frank and Barbara to the Petitioner (in respect of the period from 29 January 2015 to 31 December 2015), it appears that numerous payments have been made by the Company which were in fact unrelated to the business of the Company. Such payments are set out in Appendix 1 hereto.
70.	In causing or allowing such payments to be made, Frank and Barbara have breached their Directors’ Duties (including the duty to act bona fide in the best interests of the Company; the duty not to misapply company assets; and the duty to act with reasonable skill, care, and diligence).”

I shall refer to this as the “Misconduct Claims”.

25.  The Prineppis’s pleaded defence to these claims is as follows:

“36.	Save that it is denied that the Management Contract, R&D Agreement, Frank’s Employment Contract and Barbara’s Employment Contract were unauthorised, paragraph 52 is admitted.
37.	Paragraphs 53, 54, 55 and 56 are admitted.
38.	As to paragraph 57, it is admitted that the Management Contract and the R&D Agreement were both signed in the manner alleged but it is denied that the Petitioner was unaware of the existence of the terms of these two agreements prior to execution. Frank and Barbara contend that the terms were pre-approved and that the agreements were executed on 14th October 2014 with the full knowledge of the Petitioner.
39.	As to paragraphs 58 and 59, it is admitted that Frank’s Employment Contract and Barbara’s Employment Contract were signed in the manner alleged. Frank and Barbara were the only directors of the Company on 14th October 2014. However, it is denied that the Petitioner was unaware of the existence of the terms of these two agreements before they were executed. Frank and Barbara contend that the terms were pre-approved, that the agreements were executed with the full knowledge of the Petitioner, and that in any event no formal consent was needed prior to the establishment of the joint venture.
40.	As to paragraph 60, it is denied that the agreements referred to were signed in 2016 and then backdated to 14th October 2014 whether as alleged or at all.
41.	Paragraph 61 is admitted save that it is denied that the agreements referred to were unauthorised.
42.	As to paragraph 62, it is admitted that the agreements were not at any time brought up for discussion and approved after 14th October 2014 and it is averred that this was solely because the agreements had already been approved on or before that date following extensive discussions.
43.	Paragraph 63 is denied. It is averred that the Petitioner as at 14th October 2014 was fully aware of the nature and terms of the agreements referred to and that, having approved such terms following extensive discussions, the Petitioner required that they be executed accordingly on 14th October 2014. The Company was wholly owned and controlled by Frank and Barbara from the date of its incorporation on 3rd September 2014 until after the 1st JV agreement was signed on 14th October 2014 and it will therefore be contended that no formal consents were needed from the Petitioner before that date.
44.	As to paragraph 64, it is denied that the agreements referred to were executed in 2016 or that they were executed without authority from the Company as alleged or at all.
45.	As to paragraph 65, it is denied that Frank, Barbara and/or Guilden committed a breach of the 1st and/or 2nd JV Agreements as alleged or at all and, in particular, it is denied that the Management Contract and the R&D Agreement were executed without authority or that they were not binding on the Company.
46.	Paragraphs 66, 67 and 68 are denied. In particular, and with regard to Georgina’s contract, the prospect of her being employed by the Company was fully discussed between Barbara and David, and Jesse Lu knew of her proposed appointment as well. Barbara was referred to SEA Holdings Limited’s HR department for assistance and Frank and Barbara will contend that Georgina’s appointment was the subject of informal consent as merely an ordinary business expense that did not require full shareholder or board approval in any event.
47.	As to paragraphs 69 and 70, it is admitted that the payments referred to in Appendix 1 were made by the Company. However, it is averred that Frank was holding the patent applications on behalf of the Company and that the payments of Mr. Richard Halstead’s fees were therefore properly and correctly debited to RAM’s account as an ordinary business expense in that the inventions referred to in the patent applications were exclusively used in the Company’s business. The only exception is item 3 in Appendix 1, which was a billing error that has since been reversed as the correct paying party was Frank and not the Company.”

26.  In its Reply Silver Achiever asserts that if IP Rights in the Products were transferred to CEL by virtue of the R&D Agreement there was no reason for the Company to pay HK$155,610 per month in order to receive those rights as the Prineppis had warranted that they were owned by the Company and this allegation contradicts the Prineppis’ case that by virtue of the R&D Agreement the IP Rights were vested in the Company. It is further asserted that Pamela Chu, a consultant at Silver Achiever’s solicitors had spoken to Mr Halstead, who informed her that he had only dealt with the Patent applications and had no knowledge of IP Rights in the Products and had not been involved in drafting the TPA. It is also denied that either Jesse or David approved Georgina’s employment.

27.  In HCCW 203 Silver Achiever seeks by way of relief a declaration that the IP Rights in the Products and Software held by CEL and/or Zhang Ming and Long Jun are held on trust for the Company. In addition it seeks various orders, but although differently worded the import of them is the same: the Prineppis repay US$750,000 representing all the interest free loans and purchase Silver Achiever’s shares and pay back to the Company the sums paid to Georgina alternatively the Company is wound up.

28.  In HCA 1377 Silver Achiever makes claims against the Prineppis and Guilden for misrepresentation and breach of the warranties in the 1^st and 2^nd JVAs in respect of the IP Rights. The claims in respect of the IP Rights largely mirror the claims in HCCW 203, but the relief sought is different, namely, damages for the breach of the warranties or damages for misrepresentation.

The Issues in the two cases

29.  In broad terms the claims and the defences give rise to the following issues:

(1)  Did the Prineppis misrepresent the ownership of the IP Rights in the Products and the Software (“Representations”) and breach the warranties?

(2)  Did Silver Achiever rely on the Representations when it decided to invest?

(3)  What were the commercial consequences of such breach of the warranties as the court finds took place?

(4)  What if any relief is Silver Achiever entitled to in HCA 1377?

(5)  The Misconduct Claims and, in particular, the extent to which David knew about the matters of which Silver Achiever complains and did not object.

(6)  Did the Prineppis conduct the affairs of the Company in a manner that was unfairly prejudicial to Silver Achiever’s interest in the Company as shareholder?

(7)  If the answer to (6) is in the affirmative, what relief if any is it entitled to.

30.  It is relevant to record at this point that the Prineppis do not dispute that they had agreed that the legal and beneficial interests in the IP Rights were to be owned by the Company. The Prineppis do not suggest that any other person (including themselves) is entitled to own them and that, to the extent there is any concerns over ownership of the IP Rights, they have all along made it clear that they will execute any further documents necessary to resolve such concerns as Silver Achiever may have about ownership of the IP Rights. The Prineppis suggest that Silver Achiever’s claims in respect of the IP Rights cannot, therefore, be genuine and that those claims along with other claims about alleged breaches of fiduciary duty are a manufactured case pursued by Lambert, because he did not like the investment his Father decided to make and wishes to extract Silver Achiever from it.

Witnesses

31.  Before turning to consider each of these issues in detail I will deal with my impression of the witnesses. Unfortunately, the adjournment of the trial for some time resulted in the witnesses being called out of order with Frank and Barbara having to be interposed between David and Lambert, because they live in the USA and had commitments which required them to return by the end of the period originally reserved for the trial. Evidence was given by Lambert, David, Dora Chow (SEA’s company secretary) and Yap Shee Liam (SEA’s financial controller). Silver Achiever chose not to call Jesse. Mr Wright suggested in opening that this inhibited Silver Achiever’s ability to prove that it had relied on the Representations. Of significance was the differences in evidence between Lambert and David. Lambert had not been involved in the negotiation of the 1^st JVA, although he said he had been kept informed of the negotiations by his Father. Lambert met the Prineppis on 26 August 2014. During that meeting he says they confirmed that the IP Rights were owned by the Company and it was made clear by his Father that it was on this basis that he would invest. It was also made clear, he says, that if CEL was to be engaged by the Company to provide services it would have to quote competitively with other service providers. He also says that prior to their second request for funding the Prineppis had told him that they were about to file three patents in the UK and the USA, which would protect the Company’s ability to exploit the technology he understood the Company to own. Lambert says that this seemed to him no more than was to be expected given his understanding that the Company owned all the IP Rights. Lambert’s attitude towards the Prineppis appears to have changed about this time because of his discovery of three things. First, that the Patents had been filed in Frank’s name. Secondly, the continuing failure of the Company to sell any of the Products and Software. Thirdly, Mr Yap at Lambert’s request in December 2015 reviewing how Silver Achiever’s funds had been used. Mr Yap reported to Lambert the following financial information.

“

”

32.  Lambert was concerned that these sums had been paid without Silver Achiever’s approval. My impression from Lambert’s answers in cross-examination was that he became deeply sceptical of the Prineppis’ integrity and the investment from this time and this coloured his approach thereafter. He had come to the view that the Prineppis had duped his Father into agreeing to invest, which David had been gullible in supporting, and then used the sums invested to pay themselves, their daughter and CEL. They had never made any meaningful effort to ensure that Silver Achiever knew and agreed these payments. David’s evidence was not, however, consistent with Lambert’s in this regard.

33.  David was appointed as a director of the Company on 17 October 2014 and remained on the Board until 17 May 2016. It was the evidence of SEA’s company secretary, Dora Chow, who gave evidence at the trial (although she only joined SEA in January 2015) that he was “a Silver Achiever-appointed director pursuant to the 1^st JV Agreement”. He was replaced on 18 May 2016 by Mr Yap, who was SEA’s financial controller at Silver Achiever’s instigation. It was Lambert’s evidence that David was not, however, Silver Achiever’s representative director. In my view this is disingenuous. Clearly David was on the Company’s Board primarily to represent Silver Achiever’s interests. Lambert’s evidence was in my view clearly an attempt to circumvent the fact that he knew David’s understanding of some of the controversial events I address later was different from his own.

34.  David had known the Prineppis for some time. He did know that Georgina had been employed and that the Company was paying the Prineppis salaries and certain expenses to CEL. He did not feel it was necessary to intervene or report this to Jesse or Lambert, although he was clearly appointed to look after their interests. There was a material conflict between his evidence and that of Lambert, Mr Yap and Ms Chow in relation to what was known and the extent to which the Prineppis were hiding things from Silver Achiever.

35.  The Parties adduced joint expert reports on the law and practice relevant to an assessment of the substance of Silver Achiever’s complaints. The experts were not cross-examined as it transpired there was no material dispute between the experts.

36.  The Prineppis called, in addition to themselves, Georgina and Mr Halstead. Barbara was more confrontational in her evidence than Frank and her manner and answers suggested that she had probably been more confrontational in dealing with Lambert, who it became clear she felt had been officious and unreasonable in his requests and objections. It does not follow, as Ms Cheung suggested, that Barbara was unreliable. She may genuinely feel that Lambert’s criticisms are unjustified and the suggestion that she and her Husband had been cheating Silver Achiever offensive. Any assessment of the demeanour of a witness had to be made in conjunction with an assessment of the substance of the evidence that the witness is giving and with regard to the witnesses possible subjective view of matters. Irritability does not necessarily indicate unreliability.

37.  Frank, Georgina and Mr Halstead were straightforward witnesses explaining what they could recall of the events about which they were cross-examined.

The Representations

38.  So far as HCCW 203 is concerned the allegations in the Re-Amended Petition (which, of course, defines the issues[3]) is quite straightforward. In [16] it is pleaded that the Prineppis represented that the Company owned the IP Rights. In [17] it is pleaded that Silver Achiever relied on the representations and entered into the 1^st JVA, which contained warranties pleaded in [18], which repeated the representations. It seems to me that little turns on what exactly was said at meetings prior to 14 October 2014 and precisely how they impacted on Jesse’s deliberations, which led to the 1^st JVA. There is no material dispute that Prineppis led Jesse to understand that the Company would own the Products, the Software and the IP Rights.

39.  Frank describes himself in his evidence as an electronics engineer with extensive experience in the design and development of various types of products including products for use in the oil exploration and extraction business, particularly in the USA. It is clear from Mr Halstead’s evidence that Frank is familiar with the significance of ownership of IP Rights in developing and commercialising technical products. In his witness statement Mr Halstead explains that he first met Frank and Barbara in 1987 shortly after joining Johnson Stokes and Master and since that time he has drafted and prosecuted many patent applications relating to inventions made by Frank. According to Mr Halstead, Frank has 23 inventions available on public patent databases and has been a prolific and successful applicant and inventor for many years, all of which were drafted and prosecuted through to grant of patents by Mr Halstead. I did not understand Frank to suggest that this overstates his experience. It must, therefore, have been clear to Frank, or it certainly should have been, that in signing the 1^st JVA he was agreeing unequivocally that the Company would own both the unencumbered legal and unencumbered beneficial interests in the Products, the Software, the IP Rights and any future modification or development of them. It must also, or again should have been, clear to him that this was central to the commercial transaction and that Silver Achiever (in practice Jesse and possibly Lambert) understood this to be the case. This is clear from Recital B and the warranties in the 1^st JVA.

40.  Silver Achiever was and is entitled to assume that this careful, comprehensive legal agreement meant what it said. If ownership of anything was qualified by, for example, the legal interest vesting in a 3^rd party for the benefit of the Company the Prineppis should have explained this. If the Company did not own the IP Rights in the Products or the Software as at 14 October 2014 the Prineppis (and Guilden) were in breach of the warranties. If, however, those breaches were minor and technical in nature this may have a bearing on whether Silver Achiever can establish that it has been unfairly prejudiced, and the relief it is entitled to either in HCCW 203 or HCA 1377.

41.  The next issue to consider is to what extent had the 1^st JVA (and subsequently the 2^nd JVA) had been breached.

Were the JVAs breached?

42.  Silver Achiever invites me to find the following:

(1)  That until May 2016 the patents rights to the Products were registered in Frank’s name.

(2)  The true owners of the IP Rights were either CEL (if Zhang Ming and Long Jun were employees of CEL) or Zhang Ming and Long Jun (if they were contractors of CEL).

43.  The reason Silver Achiever asserts the foregoing is because it does not accept that the two agreements which the Prineppis say transferred the IP Rights to the Company had been executed by 14 October 2014. The two agreements were, first, the APA signed on 22 September 2014, pursuant to which CEL transferred the IP Rights to Frank at a consideration of US$1.5 million. The second was the TPA which the Prineppis say was executed on 14 October 2014 pursuant to which Frank purportedly sold the IP Rights to the Company for US$9 million worth of share equity. Silver Achiever asserts that they were only executed after 14 October 2014 when Silver Achiever began to ask searching questions about the ownership of the IP Rights. Silver Achiever’s allegations are serious. It is implicit in the allegations that the Prineppis knew that the 1^st JVA falsely stated the ownership of the IP Rights. Silver Achiever asserts that the APA and the TPA were only executed in 2016, which, if correct, suggests that the failure to ensure that the Company owned the IP Rights was not the result of a casual approach to compliance with agreements as might be inferred if the APA and TPA had been signed, say, in December 2014, but was conscious. In Silver Achiever’s closing Ms Cheung does not shy away from the seriousness of the allegation. She describes the APA and TPA as “fraudulent backdated documents”. It is well established that allegations of serious misconduct require cogent evidence commensurate with the seriousness of the allegation, because the court assumes that generally minor mistakes are more common than serious ones. This is explained in [182] and [184] of Nina Kung v Wang Din Shin[4]. Consistent with this a disciplined approach is required to the drawing of inferences of wrong-doing as I explain in [22]–[23] of Re ChinaCulture.com Limited[5]:

“22. … I am mindful of the observations of Ribeiro PJJ in Nina Kung v Wong Din Shin[6] on the need for a disciplined approach to the drawing of inferences, in particular inferences of serious misconduct.

‘187. In HKSAR v Lee Ming Tee & Securities and Futures Commission (2003) 6 HKCFAR 336, Sir Anthony Mason NPJ acknowledged the need for such a disciplined approach to the drawing of inferences and in particular for inferences of fraud or serious misconduct to be drawn only where such inferences are compelling. Dealing with an allegation that senior SFC officers had deliberately and improperly terminated an investigation in order to avoid compromising the standing of the subject of the investigation who was acting as an expert witness in a criminal trial in which the SFC was interested, his Lordship stated:

“… that conclusion was not to be reached by conjecture nor, as the respondent submitted, on a mere balance of probabilities. It was to be plainly established as a matter of inference from proved facts”. (at §72)

Reflecting the Re H & Others (Minors) (Sexual Abuse: Standard of Proof) [1996] AC 563 principle he added:

“In the particular circumstances, it was for the respondent to establish as a compelling inference that very senior officers of the SFC had deliberately and improperly terminated the investigation into Meocre Li’s conduct for the ulterior purpose alleged, sufficient to overcome the inherent improbability that they would have done so.” (Ibid.)

It will be convenient to refer to the principle adopted in these cases as ‘the HKSAR v Lee Ming Tee & Securities and Futures Commission principle.’

23. An allegation of wilful misconduct by a director of a power for an improper purpose is a serious one. As these passages make clear the necessary inference can only be drawn from proven facts, which make the inference compelling. It is not sufficient to identify a series of wrongs and mistakes committed over time and invite the court to conclude that by virtue of their number it is probable that something more than negligence or indifference was their cause. This is to invite speculation and conjecture. It is necessary for the court to find facts, which assessed in context are indicative, in the present case, of the Defendants’ attitude and motives. Context includes how a person or a company normally conducts its affairs. If it is normally casual and unsophisticated, it is difficult to infer anything about the motives for dealing with a particular transaction in a casual and unsophisticated manner. Similarly, if the facts can credibly be explained as mistakes or errors of judgment an inference of, in the present case, conscious non-compliance by the Directors with their duties, or recklessness indifference to doing so, cannot properly be made.”

44.  The natural place to start to investigate this issue is to ask why the Prineppis would not have taken steps to transfer the IP Rights to the Company by 14 October 2014? Given the clarity of the 1^st JVA they cannot have thought that they could retain ownership of the IP Rights and exploit them. As the Prineppis (through Guilden) owned 90% of the Company there is no obvious reason why they would have been concerned about the Company owning the IP Rights. Silver Achiever has identified no motive for the Prineppis deliberately retaining the IP Rights.

45.  As Silver Achiever emphasises the negotiation of the 1^st JVA took some time and it must have been apparent to the Prineppis, particularly Frank, that ownership of the IP Rights was central to the transaction. It is inherently unlikely that Frank would have overlooked the importance of ensuring that the Company owned the IP Rights and given his extensive experience in developing products and registering patents he must have understood that this involved legal procedures to ensure that ownership was clear. This points to it being likely that the Prineppis gave thought to the legal ownership of the IP Rights during the negotiation of the 1^st JVA. The contemporaneous documents demonstrate that they did. The Prineppis instructed Squire Patten Boggs (“SPB”) and have disclosed emails with them in late September 2014. These emails clearly show that SPB had advised on an agreement for transfer of IP Rights from CEL to Frank and on an agreement (SPB sent a draft on 29 September 2014 to Barbara) for Frank to transfer those rights to the Company. Silver Achiever do not suggest that these documents have been fabricated. Neither does it suggest that CEL’s invoice for the price for the transfer of the intellectual property rights dated 22 September 2014 for US$1.5 million had been fabricated. This sum also appears in CEL’s audited financial statement for the year ending 31 December 2014. The Prineppis disclosed emails between Barbara and Cat Lai, who was acting as the company secretary for CEL and the Company in September and October 2014, recording Barbara requesting minutes for CEL and the Company approving signing of the two agreements and the agreements themselves; and relevantly that Barbara recalled giving copies of the agreements to Ms Lai when she met her at Wendy Chan’s office in October 2014.

46.  Despite the absence of any obvious motive and the emails to which I have referred, Silver Achiever invite me to find that the TPA and APA are fraudulent backdated documents for the following reasons. First, there is no closing date inserted in clause 3.2 of the TPA. This is not direct evidence that the TPA was signed in 2016. I am invited to draw an inference that the absence of a closing date is consistent with the TPA being executed later. This seems to me plainly wrong. Clearly the obvious inference to draw is that the Prineppis forgot to complete the date. In my view it is if anything more consistent with the TPA being executed on 14 October 2014, because if the TPA was fraudulently backdated one might have expected the Prineppis to have been alert to the need to complete clause 3.2. If it was executed on 14 October 2014 there would have been less reason for them to have worried about it.

47.  Secondly, SPB had advised that the TPA only be signed at the closing of the 1^st JVA, but contrary to this advice it was Frank’s evidence in cross-examination was that he signed it before he went to the closing. This is a thoroughly bad point. The suggestion that the court could infer anything of substance from this other than that Frank did not always follow legal advice to the letter is nonsense.

48.  Thirdly, clause 3.2 of the TPA states that subject to the TPA the Company would issue to Frank US$9 million worth of shares. However, the shares were issued on 25 September 2014, which was of course before the TPA was signed. As on 25 September 2014 the Prineppis owned the Company there is nothing especially remarkable about this and it certainly does not support an inference that the TPA was not signed on 14 October 2014, but was fraudulently backdated two years later.

49.  Fourthly, Ms Cheung submitted that the Prineppis differing recollection of exactly when and where the TPA was signed was consistent with the TPA not having been signed on 14 October 2014. There is nothing remarkable about a person having difficulty recalling events four years or longer (the witness statements were signed in May 2019) after they took place. I think it relevant that the Prineppis are in their 70s and I think I can take judicial notice that people’s memories dim with age; certainly this is consistent with my experience. It is also well known that people remember events most clearly if at the time they had reason to remember them. If Frank did sign the TPA on 14 October 2014 the fact that Barbara in particular could not clearly recall the order of events is not surprising and it was Barbara’s memory, which was principally subject to criticism in closing. The criticism mainly focused on Barbara’s evidence of when the Management Contract and the R&D Agreement were signed. The substance of her evidence did not change; the TPA was executed before the 1^st JVA was signed. The suggestion in Silver Achiever’s written closing that in cross-examination Barbara changed her evidence and suggested that the TPA was signed with 1^st JVA is wrong. Barbara was referring to the timing of the signing of the Management Contract and the R&D Agreement.

50.  In my view, and I so find, the TPA was signed on the morning of the 14 October 2014. Silver Achiever has not proved that was signed in 2016 and I would question whether it was proper to advance a case that it was fraudulently backdated in 2016 in closing given the evidence.

51.  Silver Achiever argued that even if I were to find the TPA had been signed on 14 October 2014 it was probable that the APA was not valid and the chain of title transfer was not complete and, therefore, the TPA did not transfer the IP Rights to the Company. Silver Achiever’s case is based on the fact that it had been Franks’ evidence in his witness statement that the APA had been executed on 22 September 2014 as apparently recorded in CEL’s board minutes of that date. However, the emails between Barbara and SPB suggest that it probably had not been, because SPB were still making suggestions about the terms of the APA in late September. Frank accepted in cross-examination that it might have been signed later. Of course this does not mean it was not signed by 14 October 2014 and no reason has been advanced why if the TPA had been signed by 14 October 2014 the APA would not have been signed by this date.

52.  In Barbara’s evidence in re-examination she mentioned in answer to questions about the decision to transfer the IP Rights to the Company through a two stage process, which involved a transfer of CEL’s rights to Frank and for Frank to transfer them to the Company, that Frank had signed the APA on 22 September 2014 because Frank was going to the States. In re-examination Frank confirmed that he had checked his passport and the chop confirmed that he had left Hong Kong for the USA on 22 September 2014. His recollection was that he had signed the APA on 22 September 2014 because he was about to leave for the USA. This would explain why the APA is dated 22 September 2014. I accept that Frank had simply forgotten this when he made his witness statement.

53.  This also explains why CEL’s invoice for the price for the transfer of the IP Rights is dated 22 September 2014. I accept that the invoice had not been fabricated. This sum also appears in CEL’s audited financial statement for the year ending 31 December 2014. The Prineppis disclosed emails between Barbara and Cat Lai, who was acting as the company secretary for CEL and the Company in September and October 2014 recording Barbara requesting minutes for CEL and the Company approving signing of the two agreements and the agreements themselves; and relevantly that Barbara recalled giving copies of the agreements to Ms Lai when they met at Wendy Chan’s office. This also seems to me consistent with the APA having been signed by Frank before 14 October 2014 and on 22 September 2014.

54.  My conclusion is that both the APA and the TPA had been signed before the 1^st JVA. In [28]–[31] of the Re-Amended Petition (which determines the claims[7] that Silver Achiever can advance in HCCW 203) it is pleaded that the TPA was ineffective, because at the material time either CEL owned the IP Rights in the Products and Software by virtue of being it being the employer of their creators Zhang Ming and Long Jun, or because Zhang Ming and Long Jun were the owners if they had produced the designs of the Products and the Software as independent contractors for CEL. There is no reference to the APA. In the Amended Points of Defence the evolution of the design of the Products and the Software is pleaded in detail. The relevant part pleads that: “The concepts for the PCB hardware of the early Envoy Products (‘Envoy’ being a brand belonging to CEL) were created in about 2012 by Frank and developed by him together with a contract hardware designer called Wei Qi Rui who carried out Frank’s instructions relating thereto. All such hardware and products were so created on the understanding and with the intention that all the copyrights relating thereto would be owned by CEL or by Frank on behalf of CEL. To the extent that they may not already have been owned by CEL, the copyrights and certain other rights resulting from Wei Qi Rui’s work were assigned to CEL by virtue of assignments in writing, constituted by purchase orders issued by CEL and counter-signed by Wei Qi Rui, on divers dates from 14^th December 2010 until 9^th July 2014. The said concepts were embodied in the Envoy, IPC and ACC products that existed at the time of the execution of the 1^st JV Agreement on 14^th October 2014. Wei Qi Rui’s role was to use a CAD program to prepare a ‘schematic’ for each circuit diagram which Frank would then check, require modifications for and, if appropriate, approve as the final version. Thereafter, Wei Qui Rui would use a CAD program to generate PCB layout masks for use in finished products.” Zhang Ming did not become involved until shortly after the 1^st JVA was signed and the Prineppis plead that such of the IP Rights as Zhang Ming may have owned as a result of his work produced after the 1^st JVA were assigned by purchase orders issued by CEL and counter signed by Zhang Ming between 4 June 2014 and 15 April 2015. Long Jun became involved in the design work from 6 January 2014. On 14 April 2016 Zhang Ming and Long Jun executed intellectual property assignment agreements (“IP Assignments”) in favour CEL because about this time Silver Achiever had queried whether the IP Rights had been effectively transferred to the Company. This answer to Silver Achiever’s claim is not expressly pleaded to in the Points of Reply, although further and better particulars had been asked for and provided of [20] of the Amended Points of Defence. I deal with this issue further in [77]–[79].

Patent Applications

55.  In about June 2015 the Prineppis requested additional funding of US$ 1 million. It is Silver Achiever’s case that in order to induce the Lus to do so, in about June 2015 the Prineppis represented to David that three patents applications relating to the injection of chemicals into well heads had already been filed in the UK and the USA in the Company’s name which ensured that only the Company could exploit the new technology that the Company owned and that the Company could charge a premium for goods sold or licensed to 3^rd parties. On 30 July 2015 the 2^nd JVA was executed and Silver Achiever subscribed for 61 new shares for the sum of US$250,000 and advanced an interest free loan to the Company of US$250,000.

56.  Silver Achiever repeats the complaint made in respect of the 1^st JVA, which I have rejected. It also advances two additional complaints of misrepresentation and breach of warranties in the 2^nd JVA. The first is that the Patents had, contrary to what had been represented, been registered in Frank’s name: UK Patent Application Number GB1600848.4 on 30 June 2015; UK Patent Application Number GB1511423.4 also on 30 June 2015 and US Patent Application Number 14790553 on 2 July 2015. The other complaint concerns ownership of the IP Rights in new Products created on or after 14 October 2014, which were vested in CEL not the Company for reasons that I explain later. I shall deal with the Patents first.

57.  There is no dispute that the Patents were registered in Frank’s name rather than that of the Company. The Prineppis dispute that they represented that the Patents had been registered in the Company’s name, which they say would have been foolhardy given the fact that it could readily be demonstrated that this was not the case. In neither the Amended Points of Claim nor the Re-Amended Statement of Claim do Silver Achiever say who the representation was made to. In David’s witness statement he simply says in [59] “Prior to making the funding request, Frank and Barbara had stated that they were about to file 3 patent applications in the UK and the USA. They stated the patent filings were of the utmost importance to ensure that only RAM could exploit the new technology which the company owned”. It is unclear if the representation was made to him. Assuming that this was said to David it was not a representation that the Patents were to be registered in the Company’s name. The relevant paragraph in Lambert’s witness statement is couched in similar language: “Prior to making their request for additional funding, Frank and Barbara informed me that they were about to file 3 patent applications in the UK and the USA. They stated the patent filings were of the utmost importance to ensure that only RAM could exploit the technology which the company owned”. This is not the same as Frank and Barbara stating that the Patents would be registered in the Company’s name. In [46] Lambert goes on to say “When Frank and Barbara raised the question as to whether they could proceed to make the patent applications, they were told to proceed and that such should be done regardless of whether there would be a second round of funding.” Plainly this is not evidence that Lambert was told by Frank and Barbara that the Patents would be registered in the Company’s name.

58.  Frank’s evidence can be summarised as follows. It was always his and Barbara’s intention that the Patents were beneficially owned by the Company. He does not suggest that he is their beneficial owner. However, he understood at the time from the advice he had received from Mr Halstead over the years that it was more straightforward to file a patent application in his own name as inventor, originally because the US Patent Office procedures had required, until recently, all patent applications to be made in the name of their inventors not their employers. This was borne out by Mr Halstead’s own evidence. He says this in [4]–[5] of his witness statement:

“4.

When filing patent applications in respect of inventions made by Mr. Prineppi, I always started with an originating application in the United Kingdom, using for that purpose a UK-based patent agency firm essentially as a postbox, even though the main market for his various inventions over the years was usually the USA. The advantage was cost and convenience, since the UK Patent Office is one of the most efficient in the world and, certainly nowadays, it is often possible to obtain the results of novelty searches carried out by the UK Patent Office well before the first anniversary of the original filing date. In that regard., it should be noted that the first anniversary of any originating patent filing is an important date due to the provisions of an international treaty called the Paris Convention whereby corresponding patent applications filed elsewhere are effectively given the original filing date, thereby obviating the need otherwise to file multiple applications around the world at the same time, with all the costs and uncertainly such would entail. As a consequence, by filing the originating applications in the United Kingdom and receiving the results of the novelty search reports well in advance of the first anniversary, potentially very costly decisions on whether or not to file corresponding patent applications elsewhere could then be made with some confidence if the novelty searches showed the invention to be new and therefore potentially patentable. The only practicable alternative to this arrangement would have been for me to file the originating patent applications for Mr. Prineppi in the USA (given that Hong Kong does not have an originating filing facility for patent applications and the US market was the main focus for his inventions), but that would have necessitated the additional cost of appointing a US patent attorney to ensure that patent descriptions I drafted conformed with US practice and, more importantly, without the likelihood of the first examination report (indicating novelty or otherwise) being available before the first anniversary of the original filing date.

5.

Such UK patent filings were usually in Mr. Prineppi’s own name rather than the name of his company, Capricorn Electronics Ltd (‘CEL’) of Hong Kong, for two reasons. First, until fairly recently all patent applications in the USA (his main market) had to be in the name of the inventor, so there was no point in filing the originating patent applications in the UK in the name of his company. Secondly, this was a potential safeguard against the possibility of CEL going into liquidation or being subject to any third-party claim against the company for whatever reason by which its assets were put at risk, in which case such patent applications and/or patents would then arguably survive such an event. I always recommend this type of arrangement, which is quite common when dealing with all kinds of intellectual property, for clients with small or start-up companies where ownership of potentially valuable IP is otherwise vulnerable if it stands in the company’s name.”

59.  Mr Halstead goes on to explain the development of the well head monitoring system to allow for remote monitoring of the quantity of chemicals required in order for the oil wells to operate successfully and efficiently and facilitate the necessary adjustments. Mr Halstead explains the following in [8]–[11] of his witness statement.

“8.	… This system included all the protocols and algorithms necessary for constantly and remotely monitoring and adjusting chemical delivery at each well-head site. These were not included in the patent application, since computer software, as such, is not patentable. In order to qualify for patent protection all that is required is a general description of a product or process which will clearly work in practice. Hence, the specific design of the ENVOY system architecture was not included in the patent application, but remained as proprietary know-how not intended for publication.
9.	The original UK patent application (GB1416709) and two follow-up applications with improvements (Nos. GB1504845 and GB1510257) were filed in Mr. Prineppi’s own name, as usual, as was also a combined US patent application containing all the subject matter contained in these three UK filings (No.14/790,553 – published in 2016 under number US2016084242). This US patent application is the first item listed in Exhibit RRH 1 and was filed on 2nd July 2015 claiming priority from these earlier UK filings.
10.	In around March 2016, I first became aware of an issue that had arisen in Hong Kong on which Mr. Prineppi requested my advice, this being that a minority investor in the ENVOY technology was complaining about the fact that the patent applications I had filed were in Mr. Prineppi’s name and not in the name of the operating company that had been incorporated in order to exploit the ENVOY technology, Remote Automation Monitoring Ltd (‘RAM’). He explained to me at the time that his agreement with the minority investor only related to the technical field relevant to the oil and gas industry, although some of the intellectual property he had created could be used in other technical fields which were of no relevance to the ENVOY project and was therefore specifically excluded from the investment agreement. On learning of this I immediately suggested the obvious solution, this being that he execute and record an exclusive license in favour of RAM in respect of the pending patent applications but limited to the ENVOY technical field, which would thereby permit Mr. Prineppi to use that part of the technology in other fields, as he was entitled to do, whilst excluding him from the ENVOY technical field. I therefore prepared an exclusive license agreement which was subsequently signed on 6 April 2016 and recorded at the UKIPO on 25th April 2016. When making the suggestion to Mr Prineppi for him to execute an exclusive licence in favour of RAM in respect of the relevant technology I was unaware of the full details of the investment and had not seen any of the agreements relating thereto. I have subsequently been shown the documents called ‘Joint Venture Agreements’, being in reality an investment agreement (‘JV1’) dated 14th October 2014 and another investment agreement (‘JV2’) dated 30th July 2015, as well as other agreements transferring IP from various parties to RAM in advance of JV1.
11.	The JV agreements refer only to matters relating to financial investment in and loans to RAM and although there is reference to intellectual property, especially copyright, there is no reference to the patent applications I had filed. Given that I had already filed the first of the UK patent applications referred to above before JV1 was signed I found this somewhat surprising but perhaps understandable given that when I gave permission for my name to be included in the Business Plan it was at a time when the first patent application had not even been filed. In any event, the backbone of the ENVOY development was its software-based operating system in which the primary intellectual property was copyright, whereas the subject matter I later identified as being potentially patentable was somewhat peripheral, as explained above…”

60.  I am not here concerned with whether Mr Halstead is correct in his views. What I am concerned to determine is whether it is likely that Frank and Barbara told David and Lambert that the Patents were registered in the Company’s name. Mr Halstead’s evidence is consistent with Frank believing that the Patents should be registered in his name although ownership should then be acquired by the Company. If this is what he believed it would explain why he would not have told David or Lambert that the Patents were registered in the Company’s name. Particularly given the equivocal nature of David and Lambert’s evidence it seems to me that it is likely that Frank is telling the truth and I so find. It follows that I also find that the Prineppis did not represent to Silver Achiever prior to the signing of the 2^nd JVA that the Patents were registered in the Company’s name. This does not alter the substantive point that it was intended that the Company would own the commercially exploitable rights represented by the Patents, but this is not disputed by the Prineppis and in due course, although admittedly late, on 6 April 2016 an exclusive licence agreement was signed by Frank in the Company’s favour, which was recorded in UK Patent Office on 25 April 2016.

Other IP Rights created between 14 October 2014 and 30 July 2015 when the 2^nd JVA was signed

61.  It is Silver Achiever’s case that all further IP Rights created as a consequence of the continuing development of the Products and the Software should have been vested in the Company and the continuing representations to this effect made by the Prineppis (and the associated warranties) leading to the 2^nd JVA were false because such IP Rights were vested in CEL or Zhang Ming or Long Jun. The Prineppis dispute this. They say it is nonsense because on 14 October 2014 CEL and the Company signed an R&D Agreement which transferred all such rights to the Company. The reason Silver Achiever refuses to accept this is because the it says that the R&D Agreement was not authorised and further there was no valid assignment as the Company was unjustifiably required to pay HK$155,610 per month by way of a R&D fee. This issue overlaps with Silver Achiever’s claims of breach of fiduciary duty. It is best addressed as part of that suite of complaints.

The Unauthorised Agreements

62.  The Amended Points of Claim pleads in [60] that Silver Achiever infers that the Unauthorised Agreements were signed in 2016 and backdated to 14 October 2014. If this is correct the Unauthorised Agreements would be problematic as they were signed by Frank (in the case of the Management Contract, R&D Agreement and Barbara’s Employment Contract) and Barbara (in the case of Frank’s Employment Contract) and clearly they should have not have entered into agreements from which they personally benefited without formal Board approval, which would have required them bringing them to the attention of David and (from 31 May 2016 when he became a director) Mr Yap, the reasons for the Company entering into them and recusing themselves from deliberating and resolving whether the Company should agree them. There is no dispute this did not happen because the Prineppis say they were executed shortly before the 1^st JVA, which at the time was their company. If this is correct it follows in my view that the Unauthorised Agreements would not be liable to be set aside on the grounds that they were entered into improperly because all relevant information was known to the shareholders, who clearly agreed the agreements and to the extent that the proper procedures had not been followed the Duomatic Principle[8] applies. The claims pleaded in [63] of the Amended Points of Claim are that the agreements were in breach of duty:

(1)  Article 16 of the original Articles of Association if the documents were actually executed on a date between 3 September 2014 and 19 July 2015 (for the purposes of the issue I am considering before the signing of the 1^st JVA).

(2)  Section 536 of the Companies Ordinance, Cap 622; and

(3)  Common law.

63.  In my view if the Unauthorised Agreements were executed when the Prineppis were the beneficial owners of the entire issued capital of the Company these are barren points.

64.  Importantly Silver Achiever does not allege that if the Unauthorised Agreements were executed prior to the 1^st JVA this was a breach of the 1^st JVA. The 1^st JVA did not include the common warranty that all agreements entered into by the Company had been disclosed to the purchaser.

65.  Silver Achiever do, however, plead in [67] of the Amended Points of Claim that the payments under each of the Unauthorised Agreements were excessive and by virtue of this the Prineppis were in breach of their fiduciary duties. Silver Achiever also assert that the Prineppis owed fiduciary duties to the Company not to put themselves in a position in which their personal interests conflicted with those of the Company.

66.  Silver Achiever has adduced no direct evidence that any of the unauthorised agreements were signed and backdated. In relation to the Management Contract it pleads that it was signed in January 2016 in a short window between 1 January 2016 and 13 January 2016 when Silver Achiever received it, but there is no evidence of this.

67.  In the case of the R&D Agreement there is corroborating evidence that it was in existence in 2014 as there is an email from Barbara to CEL and RAM’s company secretary sending a copy.

68.  There is no reason to think that the Prineppis would not have put in place the Management Contract and the R&D Agreement prior to the signing of the 1^st JVA. They had employment contracts, which had been signed on 14 October 2014 as demonstrated by the fact that they gave them to David on 15 October 2014. If they were alive to need or desirability of having employment contracts it is quite likely that they would have given thought to the need for other agreements. It was an obvious thing for them to have done. Silver Achiever in my view have plainly not proved that either of the Management Contract or the R&D Agreement were not signed on 14 October 2014. I accept the Prineppis’ evidence that they were signed on 14 October 2014. If the Management Contract and the R&D Agreement were signed prior to the 1^st JVA, Silver Achiever’s complaint that they were entered in breach of duty falls away for the reasons I have explained.

69.  It was Barbara’s evidence that she offered at the Closing copies of the Unauthorised Agreements to Wendy, who she told her that she only wanted documents signed that day. The fact that Lambert had, as he said in evidence, no recollection of this (Wendy did not give evidence as she had left SEA) is of little probative value as there is no particular reason why such a conversation would have registered with him at the time. It also may be explained by his evidence that documents had to be properly categorised, which makes it all the more likely that Wendy would have had a clear brief to monitor what was executed that day and would have wished to avoid any confusion over what was handed over as part of closing. If, as I have found, the Unauthorised Agreements had been signed on 14 October 2014 it is quite possible that Barbara would have taken them to closing and offered to provide copies. It may well be that Wendy was only interested in documents executed on that day.

70.  The agreements were going to become available to David immediately by virtue of him becoming a director and there is no reason to think that the Prineppis would have tried to hide their existence until after completion as part of a plan surreptitiously to put in place agreements that resulted in them receiving payments they anticipated at the time would be considered unjustified by Silver Achiever. The agreements were bound to come to light quickly and to do so would have poisoned the relationship with the investor, with whom it can only sensibly be assumed they would have wanted to be on good terms as it was the source of the funding they required; as demonstrated by the 2^nd JVA.

71.  What seems to have happened is that Silver Achiever’s due diligence did not extend to asking for all agreements the Company had entered into up to 14 October 2014 or including, as would not be uncommon, in the 1^st JVA a warranty expressly dealing with the existing contractual obligations of the Company. When Lambert began to question the value of Silver Achiever’s investment he, and Mr Yap, began to question various transactions the Company had entered into, but the fact that Silver Achiever may genuinely have doubted whether it was necessary for the Company to pay the levels of management fees, R&D fees and salaries to which the Company was committed does not mean that either the agreements were entered in breach of duty or that their existence constituted matters that were unfairly prejudicial. They were commercial matters over which opinions differed. This is illustrated by the employment agreements of which Silver Achiever complains.

72.  As I have already mentioned David received Frank and Barbara’s employment agreements on 15 October 2014. As I have already found he was clearly appointed to represent and look after Silver Achiever’s interests. Consistent with him representing Silver Achiever’s interests it was his evidence that he passed them to Wendy. He made no complaints about their salaries. It is not in dispute that the Company’s management accounts that recorded the Prineppis salaries were given to David, SEA’s accountants and Lambert. The complaints in respect of their salaries are in my view without any merit. The same is true in my view of the complaint in respect of the employment of the Prineppis’ daughter Georgina Bartlett.

73.  Silver Achiever alleges that in causing the Company to employ their daughter as an assistant to the directors and marketing officer, the Prineppis were in breach of their fiduciary duty. However, it was David’s evidence that he knew of her employment and did not object to it. He did not suggest in his evidence that he thought her employment was objectionable. I note in passing that my impression from David’s evidence was that he found the case embarrassing. Although he said that he thought the Prineppis had not dealt with certain things well the tenor of his evidence, his framing of answers and his demeanour suggested that he thought Silver Achiever’s complaints were exaggerated. The complaint is respect of Georgina’s employment is the principal example.

74.  Silver Achiever has also advanced a claim that the Prineppis breached their fiduciary duties by causing payments to Mr Halstead totalling HK$57,933.48 in respect of patent applications in respect of methods, apparatus and improvements in delivering chemicals to well heads[9]. However, it is Silver Achiever’s case that the rights in respect of the Products should belong to the Company, which is not, and never has been, disputed by the Prineppis. As I have explained Silver Achiever claim that the Prineppis have failed to ensure, as the 1^st and 2^nd JVA required that, that the IP Rights were owned by the Company. Although it is correct that this was not the case when the 1^st JVA was signed, there is no dispute that the Prineppis had agreed it. They say that they acted in order to ensure that this became the case. They argue that the patent applications were required and, as they have never disputed that the Company was the beneficial owner of the IP Rights, the cost incurred in applying for patents were legitimately paid by the Company, which was the beneficiary of the application. It seems to me that this is probably correct. Certainly it is difficult to see how this unfairly prejudiced Silver Achiever.

75.  Although the Prineppis did not deal with the various matters of which Silver Achiever make complaint well it seems to me that they fall far short of constituting unfair prejudice and, unfair prejudice which justifies the Prineppis being ordered to buy Silver Achiever’s shares or repaying the sums advanced by Silver Achiever. For reasons that I have already explained I also reject Silver Achiever’s complaints in respect of the Unauthorised Agreements. I, therefore, dismiss the Petition.

High Court Action

76.  HCA 1377 is brought by Silver Achiever in respect of alleged misrepresentations in respect of the IP Rights in the Products and seeks damages for breach of the warranties, alternatively damages for misrepresentation.

77.  As I explained earlier the Prineppis say that by virtue of the APA and the TPA there was a complete chain of title by which the IP Rights in both the Products and the Software were transferred from CEL to Frank and to the Company on 14 October 2014. If, argue the Prineppis, the court accepts this the claims for breach of warranty and misrepresentation fall away. I have accepted that the APA and the TPA were signed by closing of the 1^st JVA. As I have already explained the Prineppis do not dispute what was agreed. There is, therefore, a degree of artificiality about Silver Achiever’s claim for breach of warranty and misrepresentation. It seems to me on the evidence that the highest one could put the complaint about what transpired was that the Prineppis were casual about ensuring that the legal interests in all the IP Rights including patents were vested in the Company. The evidence comes nowhere near demonstrating that they were trying to retain ownership or control of the IP Rights or in someway exploit them for their own benefit rather than that of the Company, of which, they were the majority owner. By way of example, the R&D Agreement, which I have found was made on 14 October 2014 expressly provided that the Company would own all rights and title in any “Technology” developed during CEL’s work pursuant to the R&D Agreement, and Technology is very widely defined. Clearly the intention was that the IP Rights associated with the ongoing development of the Products were to be owned by the Company.

78.  Turning to the detail of Silver Achiever’s case, in [18]–[24] of the Re-Amended Statement of Claim it is pleaded that the TPA did not result in the Company acquiring the IP Rights in the Products (in the pleading referred to as the intellectual property rights in the Envoy Products and the Software) because the IP Rights were created by Zhang Ming and Long Jun, who were at all material times either employees of CEL, or it is conjectured, were contractors of CEL. Consequently either the IP Rights were owned by CEL (if Zhang Ming and Long Jun were employees of CEL) or by themselves (if they were private contractors). It is Silver Achiever’s pleaded case as I understand it (although it is not clear from [18]–[21]) that CEL was not a party, although it is named as such, to the TPA because it did not sign the TPA. CEL was owned by the Prineppis and was clearly intended to be a party. Entirely unsurprisingly CEL has never suggested that it was not a party to the TPA. If it had agreed, as clearly is the case, to the terms of the TPA it is bound by them; the fact that Frank did not actually sign as the duly authorised representative of CEL does not alter the contractual consequence. In my view CEL was bound by the TPA, which I have found was signed before the 1^st JVA. Consequently, if Zhang Ming and Long Jun were employees of CEL, CEL was, as Silver Achiever pleads the owner of the IP Rights and it had transferred them to the Company at the time the 1^st JVA was signed. It is for Silver Achiever to prove the alternative, namely, that they were independent contractors.

79.  I accept Zhang Ming’s evidence that he did not work for CEL until after the 1^st JVA. Long Jun gave evidence, on which he was cross-examined, that he worked for CEL from May 2009 to June 2012 and again from January 2014, although in answer to a question from me he appeared to say that in 2014 he was an independent contractor. However, taking his evidence in its entirety it seems to me more likely that he was employed in January 2014, and I so find. The consequence is that the IP Rights in anything he produced during either period were owned by CEL and, as I have found it transferred the IP Rights to the Company before the 1^st JVA was signed.

80.  Silver Achiever repeats in HCA 1377 the complaint in respect of the Patents, which were registered in Frank’s name between 30 June and 2 July 2015. Accordingly, argues Silver Achiever the Prineppis misrepresented ownership of the Patents at the time they sought additional funding and breached the warranties.

81.  I have already found that the Prineppis did not make the representations alleged by Silver Achiever. The Prineppis raise various after defences to the claim. Mr Wright argued that the inclusion of a warranty in an agreement is not of itself a representation of the truth of the fact warranted[10]. This I accept. Consistent with this generally a warranty is not capable of being at the same time a representation of the fact warranted[11]. It follows that Silver Achiever cannot advance a case of representation relying on the warranties. If it wishes to do more than rely on breach of the warranties it has to prove that representations were made in some other form or demonstrate that the language of the agreement demonstrates that the warranties were also representations on which the relevant contractual party was entitled to rely. Silver Achiever has not attempted to demonstrate the latter.

82.  The definition of “Company Intellectual Property and Assets” in the 2^nd JVA, which was executed on 30 July 2015 includes the Patents and all other IP Rights. By clause 4.1(f) the Prineppis warranted the Company is the sole and legal and beneficial owner of the Company Intellectual Property and Assets. However, this warranty is not relied on as a representation in the Re-Amended Statement of Claim and, in my view, is not worded in such a way as to support an argument that it constituted one. In my view Silver Achiever has clearly failed to prove that a misrepresentation was made in respect of the Patents as opposed to information being provided during a general discussion about the purpose of the proposed fund raising in which reference was made to the Patents in terms, which no one can now remember, or, that if a representation was made in substantially the terms pleaded, it was relied on by Silver Achiever. I note in passing that Silver Achiever had not adduced any internal records recording deliberations on the proposed 2^nd round of funding.

83.  The remaining claim pleaded in the Re-Amended Statement of Claim is that the Prineppis in allegedly failing to procure an assignment of the IP Rights in the Products or Software repudiated the 1^st and 2^nd JVAs. In the light of my findings on the dates the APA and TPA were signed and Long Jun’s status as an employee this claim falls away.

Conclusion

84.  I will dismiss both the Petition and the Action and make a costs order nisi that Silver pays the costs of both proceedings such costs to be taxed if not agreed.