Tech 21 (Uk) Ltd v Design Blue Ltd (2017)


A claimant was allowed to amend its particulars of claim to include claims for revocation of a patent and to seek a declaration from the court.


The claimant applied to amend its particulars of claim.

The defendant had agreed to supply to the claimant material made up of a polymer-based dilatant under a sale of goods agreement. The requirements for the characteristics of the material were set out in a patent. The claimant argued that the material supplied by the defendant was in breach of their agreement as it contained no or negligible quantities of polymer-based dilatant. The defendant disagreed. It identified the basic nature of the dilatant in a confidential response to the claimant's request for further information and in a product and process description as it was considered a trade secret. That information led to the claimant's request to amend its particulars of claim. The nature of the amendments sought by the claimant included an amendment to add a claim for revocation of the patent on grounds of invalidity as it alleged that the patent was lacking in novelty or was obvious in light of two pleaded items of prior art. The defendant resisted on the basis that the claim for revocation should be tried in separate proceedings. The second amendment requested was to include a claim for a declaration that the material supplied to the claimant was not a composite material falling within the scope of the patent.


Claim for revocation - There was a close relationship between the case advanced by the claimant in support of the invalidity of the patent and the defendant's case as to why it was that the material it supplied did incorporate a polymer-based dilatant as described in the patent. In those circumstances, it made sense for the revocation claim to be tried together with the existing contractual claim. Trying the two claims together would save time and money as compared to trying them separately and would not delay the trial of the existing proceedings. The claimant was allowed to amend the particulars of claim to include the claim for revocation.

Claim for declaration - It was dubious whether the claimant's argument that the declaration was useful in advancing its case provided a sufficient basis to give a declaration. However, the claimant was allowed to add the claim for a declaration as firstly, it traversed much of the same ground as the claim for the invalidity of the patent. Little point would be served by keeping out the claim for a declaration given that the court had allowed the claim for revocation of the patent to be introduced. Secondly, it was not inconceivable that the claimant would be able to provide further information supporting the utility of requiring a declaration over and above its usefulness solely within the context of the proceedings; it would not be right to prejudge the question of whether the declaration would serve a useful purpose at the instant stage.

Application granted