Sne Engineering Co Ltd v. Hsin Chong Construction Co Ltd and Another

HCA 1466/2012

IN THE HIGH COURT OF THE

HONG KONG SPECIAL ADMINISTRATIVE REGION

COURT OF FIRST INSTANCE

ACTION NO 1466 OF 2012

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J U D G M E N T

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The Action

1.This is an action by the plaintiff against the 1^st and 2^nd defendants for infringement of a patent.

The Application

2.There is before me an application by the 1^st defendant for the Statement of Claim and the Particulars of Infringement to be struck out and for the action to be dismissed.  The 2^nd defendant has taken no part in this application.

The Claim

3.By the Statement of Claim, the plaintiff pleads that it is and was at all material times the proprietor of Hong Kong Short Term Patent No. 1150416A (“the Patent”), that the 1^st defendant is a construction contractor and that the 2^nd defendant is a construction contractor and equipment supplier.

4.The plaintiff claims that the defendants have infringed the Patent by carrying out the acts referred to in the Particulars of Infringement.  It asks for the usual remedies in a case of this nature.

The Patent

5.The subject of the Patent is an invention being a construction method for the removal of a pile. It was filed with the Patents Registry in Hong Kong on 4 August 2011.

6.In the Affirmation of Takuya Matsumoto filed on 22 August 2012 for the plaintiff in support of its application for an order for a speedy trial, Mr Matsumoto has produced as exhibit “TM-1”, a copy of the Patent together with its front page.  To enable this Judgment to be properly understood, I annex hereto as “Annexure A” a copy of the said exhibit “TM-1”.

7.In paragraph 4 of the said Affirmation of Mr Matsurmoto, he makes it clear that the plaintiff principally relies on Claim 1 of the Patent and he reproduces the English translation of the same.  The 1^st defendant does not appear to disagree with the translation or the fact that the case turns on Claim 1.  I therefore also set out the English translation of Claim 1 as follows:

“A construction method for drawing a pile where a pile can be cut off and drawn by sections from its top part comprising the following steps: -

(a) Plunging an iron sleeve: plunge the iron sleeve (5) underground to make a section of the pile (3) or a portion of the section of the pile (3) of its top embedded in the iron sleeve (5), excavate the soil in the iron sleeve;

(b) Wedging a circular wedge: use the a circular wedge (2) to wedge between the pile (3) and the iron sleeve (5);

(c) Cutting the pile: Rotate the circular wedge (2) to move so that the pile (3) is cut off close to the predicted breakpoint (4);

(d) Pulling out the pile: The cut pile (3) is pulled out;

(e) Refilling: the hole formed when the pile (3) is pulled out is refilled.”

The numbers in the claims are references to the drawings in the Patent which can be seen from Annexure A hereto.

Background

8.In the said Affirmation of Mr Matsumoto, he gives the background relating to the parties and the disputes between them.  I summarise the same below.

9.The plaintiff was incorporated in Hong Kong on 7 June 2010.  The shareholders consisted originally of three Japanese shareholders, each of whom is the owner of an engineering company in Japan, and one Hong Kong shareholder, Mr William Lam (“Mr Lam”), who owns an engineering company in Hong Kong.  The main Japanese shareholder is a Mr Sugisaki. Mr Lam got to know Mr Sugisaki a number of years ago.  Mr Sugisaki was the vice-chairman of the Pile Removal Research Association of Japan and Mr Lam was interested in Japanese technology for pile removal.

10.Although it has not been said expressly in the said Affirmation of Mr Matsumoto, I take it that the four shareholders of the plaintiff referred to above are the same four persons named as the “Inventor” under the Patent; they are Mr Lam, Mr Sugisaki, a Mr Kobiyama and a Mr Sugahara.

11.At the invitation of Mr Lam, Mr Sugisaki made a presentation to the MTR Corporation (“MTRC”) which was in the midst of preparation for the Shenzhen-Hong Kong Express Rail Link Project, which would involve a substantial amount of pile removal works.  Mr Sugisaki was also invited to make a similar presentation to Dragages which was participating in one of the tenders being invited by MTRC, referred to as Contract 802.

12.As it turned out, Contract 802 was awarded to the 1^st defendant.  The 1^st defendant had hired two sub-contractors which were referred to as Sambo and Tysan to do the pile removal work.  Apparently they were not very successful in their work.  After a presentation by the plaintiff to the 1^st defendant of the pile removal method for bored pile removal work, the 1^st defendant cancelled its contract with Sambo.  After conducting a test removal of an H-pile from the Upper Track of the site for Contract 802 using the plaintiff’s technology, the 1^st defendant and MTRC were so impressed that the 1^st defendant cancelled its contract with Tysan as well. Eventually, the 1^st defendant awarded two contracts to the plaintiff, namely, Contract 8664/10 for bored pile removal and Contract 8800/11 for H-pile removal.

13.Subsequently, the plaintiff was also awarded a similar contract for pile removal by Dragages. The details of this contract have not been given.

14.It is to be noted that Mr Matsumoto has not given any details of the demonstrations which were presented by the plaintiff to MTRC, Dragages and the 1^st defendant.

15.Work on Contract 8664/10 began on 15 September 2010 and work on Contract 8800/11 began on 28 November 2010 (but trial began on 16 October 2010).  In order to carry out the pile removal works using its own technology, the plaintiff had to bring in a large number of specialist engineers and workers from Japan.

16.Difficulties were encountered by the plaintiff in carrying out the pile removal work under the two contracts because of the unexpected presence of huge boulders around the piles.  The plaintiff had to request for variations and an extension of time under the two contracts.  Such requests were rejected by the 1^st defendant.

17.Without going into details which are not necessary for the purpose of this application, the long and short of it was that the plaintiff was forced to use its own resources to pay its own sub-contractors which inevitably resulted in delayed payments to such sub-contractors.

18.On 23 May 2012, the 1^st defendant agreed to provide financial assistance to the plaintiff to enable it to pay one of its equipment and machinery suppliers, the 2^nd defendant.  Notwithstanding such financial support by the 1^st defendant, the 2^nd defendant terminated its services to the plaintiff under various rental contracts as from 3 July 2012.

19.On the following day, the 1^st defendant excluded the plaintiff’s workers from the site and began using other workers to operate the plaintiff’s machinery and equipment and to carry out work without the plaintiff.  The 2^nd defendant also supplied operators for its own equipment and worked under the 1^st defendant’s direction.  There were confrontations between the plaintiff’s workers and the new workers which affected the progress of the works.  At a meeting between the plaintiff and the two defendants on 6 July 2012, it was agreed that the plaintiff and its workers would continue with their work and that the 2^nd defendant’s machinery and equipment would continue to be supplied to the plaintiff.

20.The 2^nd defendant operated its machinery in a purposefully slow manner which in turn affected the performance and progress of the plaintiff.  The 1^st defendant complained.  Eventually, on 11 July 2012, the plaintiff by letter accepted the 2^nd defendant’s termination of the contract between them.

21.The plaintiff then made arrangements for machinery and equipment to be supplied to itself by other suppliers.  This was prevented by the defendants’ failure to demobilise the 2^nd defendants’ machines and equipment from the site. Eventually, the difficulty was only resolved by the plaintiff obtaining an injunction on 24 July 2012.

The Alleged Infringement

22.What happened thereafter was that, on or about 26 July 2012, the 1^st defendant took over approximately three quarters of the works under the plaintiff’s sub-contracts and divided the site into two parts which it designated respectively as “SNE’s part” and “Hsin Chong’s part”.  The 1^st defendant then proceeded to arrange for the placing of the 2^nd defendant’s machinery, which had been removed from “SNE’s part” in obedience to an amended injunction order, onto “Hsin Chong’s part”.

23.The plaintiff’s workers have been excluded from “Hsin Chong’s part” and all of the remaining work for the Upper Track, except for the small portion in “SNE’s part”, has been taken over by the 1^st defendant with the assistance and participation of the 2^nd defendant.

24.After dividing the site into two parts as referred to above, the 1^st defendant immediately hired the 2^nd defendant’s machinery and workers and commenced doing work on “Hsin Chong’s part” using the methods claimed in the Patent.

Procedural History

25.By a Summons issued on 22 August 2012, the plaintiff applied for an order for speedy trial of this action.  By a Summons issued on 28 August 2012, the 1^st defendant made the present strike-out application.  The only evidence filed in relation to both applications is the said Affirmation of Mr Matsumoto on behalf of the plaintiff and an Affirmation by a Mr Lam Kam Keung Frankie (“Frankie Lam’s Affirmation”) on behalf of the 1^st defendant.

26.Both applications went before DHCJ Yan, SC on 31 August 2012.  On that occasion, the learned Deputy Judge adjourned the strike‑out application to 19 September 2012.  He also ordered that there be an early trial of this action, in the event that the strike-out application should fail, and gave directions for the further conduct of this action as per the Schedule to his Order dated 31 August 2012.

The 1^st Defendant’s Case

27.The 1^st defendant’s case can be summarized as follows:

(i)  The plaintiff’s claim in this action is doomed to failure because the sole cause of action is based on the Patent which is in fact invalid.

(ii)  The Patent is invalid and should never have been registered because as at the date of its filing, i.e., 4 August 2011, it was not an invention which could be considered as new under section 94 of the Patents Ordinance (“the Ordinance”) by reason of the fact that it had been made available to the public by means of a written or oral description or by use.  See section 94(1) and (2) of the Ordinance.

The Plaintiff’s Case

28.The plaintiff’s case can be summarized as follows:

(i)  As a matter of procedure, it is not open to the 1^st defendant to make an application for striking out and dismissal in a case of this nature.

(ii)  The invention the subject matter of the Patent was new as at the date of its filing in that it had never been made available to the public.  Furthermore, the recipients of information about the invention cannot be described as “the public”.

The Strike-Out Procedure

29.I deal first with argument by Mr Clark, Counsel for the plaintiff, that it is not open to the 1^st defendant to apply to strike out.  Basically, Mr Clark relies on section 101 of the Ordinance and Order 103, rule 19(2) of the Rules of the High Court.

30.The relevant part of section 101 of the Ordinance reads as follows:

“101.Proceedings in which validity of

Patent may be put in issue

(1) Subject to the following provisions of this section, the validity of a patent may be put in issue -

(a) by way of defence, in proceedings for infringement of the patent under section 80 or, in the case of a standard patent, in proceedings under section 88 for infringement of rights conferred by the publication of an application;

(b) in proceedings under section 89;

(c) in proceedings in which a declaration in relation to the patent is sought under section 90;

(d) in proceedings before the court under section 91 for the revocation of the patent;

(e) in proceedings under 72.

(2)  The validity of a patent may not be put in issue in any other proceedings and, in particular, no proceedings may be instituted (whether under this Ordinance or otherwise) seeking only a declaration as to the validity or invalidity of a patent.”

31.The relevant part of Order 103, rule 19 of the Rules of the High Court reads as follows:

“Actions for infringement: particulars of pleading (O.103, r.19)

19. (1) The plaintiff in an action for infringement of a patent must serve with his statement of claim particulars of the infringements relied on.

  (2) If a defendant in such an action disputes the validity of the patent, he must serve with his defence particulars of the objections to the validity of the patent on which he relies in support of the allegation of invalidity.”

32.Mr Clark argues that because:

(i)  section 101(1)(a) of the Ordinance provides that the validity of a patent may (only) be put in issue by way of defence;

(ii)  section 101(2) of the Ordinance provides that the validity of a patent may not be put in issue in any proceedings other than those set out in subsection (1);

(iii)  Order 103, rule 19(2) of the Rules of the High Court provides that, in a patent infringement action, if a defendant disputes the validity of the patent, he must serve with his defence particulars of the objections to the validity of the patent;

their combined effect is that a challenge to the validity of a patent cannot be dealt with summarily but must be resolved by a court on the merits after a proper trial.

33.I am afraid that I am unable to accept such an argument.  Order 18, rule 19 of the Rules of the High Court is of general application.  There is nothing in Order 18 itself or Order 103 or in the Ordinance which provides that a statement of claim in a patent infringement case cannot be struck out.  In the 2012 Hong Kong White Book Vol. 1, it is said on page 1478 at Note 103/0/5 that the Ordinance for the first time provides a self-contained and comprehensive code of patent law in Hong Kong.  One would have thought that if the law were as submitted by Mr Clark, there would have been a provision to that effect under section 101 of the Ordinance.  I read Order 103, rule 19(2) of the Rules of the High Court as simply imposing an obligation on a defendant who challenges the validity of a patent in an infringement action to give particulars without being asked by the plaintiff, just as the plaintiff in such an action is obliged to give particulars in his statement of claim of the alleged infringement under Order 103, rule 19(1). It does not have the effect of precluding the defendant from making an application to strike out.

34.Furthermore, in answer to my query, both Mr Clark and Mr Pao, Counsel for the 1^st defendant, say that they have not been able to find any decided case on the point.

35.It is to be noted that on page 1083 of the White Book: Note 103/0/26 makes it clear that it is possible for a patent to be revoked under the Order 14A procedure and Note 103/0/27 suggests that a patent action can be struck out for want of prosecution.  More importantly, Note 103/0/28 reads as follows:

“ Striking out patent actions for want of reasonable cause of action – This is possible under the general principles applicable under O.18, r. 19 and the inherent jurisdiction, see Improver Corp. v. Remington Consumer Products Ltd [1989] R.P.C. 69, CA where the attempt failed; Anchor Building Products Ltd v. Redland Roof Tiles Ltd [1990] R.P.C. 283, CA; Desoto Ltd v. LankroChemicals Ltd, unreported, February 8, 1989, CA, where the attempts succeeded. It is possible that inSouthco Inc. v. Dzus Fastener Europe Ltd [1989] R.P.C. 82, Aldous J., might have gone the other way following the decisions in the latter two Court of Appeal cases, which require evidence of obvious variants when the plaintiff is relying on the principles in Catnic Ltd v. Hill & Smith Ltd [1982] R.P.C. 183.

But in Strix Ltd v. Otter Controls Ltd [1991] F.S.R. 354, the Court of Appeal reversed an order to strike out on the grounds that the lower court had conducted a mini trial on the affidavits to decide whether or not there was an arguable case on infringement, and this was an incorrect course; the Anchor case (above) involved an exceptionally simple device. If in summary proceedings a court does conclude that some claims only of a patent are unarguably invalid, the court should neither strike out the action nor make an O.14 order, nor impose amendments as a condition for defending, but should make a declaration that the relevant claims are invalid (Autopia Terakat Accessories Ltd v Gwent Auto Fabrications Ltd [1991] F.S.R. 517).” [emphasis added]

36.In my judgment, it is possible in law for the 1^st defendant to apply to strike out and I find against the plaintiff on this point.

Whether the Plaintiff’s Claim Should Be Struck Out

37.I next deal with the question as to whether the plaintiff’s claim should be struck out.

38.It is trite that the Court should strike out a claim and dismiss a claim in limine only in plain and obvious cases. The burden is on the applicant to satisfy the Court that it is plain and obvious that the claimant is bound to fail.  Furthermore, there should not be a mini-trial on affidavit evidence.  The principles are succinctly set out by the Court of Appeal in the case of Ha Francesca v Tsai Kut Kan (No. 1) [1982] 1 HKC 382 at 392:

“My attention has been directed by counsel to the principles upon which the court acts on striking out applications. If I may encapsulate them, striking out should only be done in plain and obvious cases, there should be no trial upon affidavit. Disputed facts are to be taken in favour of the party sought to be struck out. The claim must be obviously unsustainable, the pleadings unarguably bad and that it be impossible, not just improbable, for the case to succeed before a court will strike out. If the court does not think the matter to be clear beyond doubt or if it fails to be satisfied that there is no reasonable cause of action or that the proceedings are frivolous or vexatious, then, there should be no striking out. One must be careful not to drive a plaintiff from the judgment seat nor should the court decide difficult points of law in proceedings such as this.”

39.As indicated above, the crux of the case is whether the matters set out in Claim 1 of the Patent had prior to the date of filing of the Patent, i.e., 4 August 2011, been made available to the public.

40.The relevant part of section 93 of the Ordinance reads as follows:

“93 Patentable inventions

(1)  An invention is patentable if it is susceptible of industrial application, is new and involves an inventive step.”

41.The relevant part of section 94 of the Ordinance reads as follows:

“94. Novelty

(1) An invention shall be considered to be new if it does not form part of the state of the art.

(2) The state of the art shall be held to comprise everything made available to the public (whether in Hong Kong or elsewhere) by means of a written or oral description, by use, or in any other way -

(a)  before the deemed date of filing of an application for a standard patent for the invention or, if priority was claimed, before the date of priority; or

(b)  before the date of filing of an application for a short-term patent for the invention or, if priority was claimed, before the date of priority, whichever is the earlier.” [emphasis added]

42.There is no definition of the expression “made available to the public” or the word “public” in the Ordinance itself.

43.Of some relevance is the definition of the word “published” in section 5(1) of the Ordinance which reads as follows : -

“5. Meaning of ‘published’

(1) In this Ordinance, unless the context otherwise requires –

(a) ‘published’ (發表) means made available to the public (whether in Hong Kong or elsewhere); and

(b)  a document shall be taken to be published under any provision of this Ordinance if it can be inspected asof right at any place in Hong Kong by members of the public, whether on payment of a fee or not.” [emphasis added]

44.There is not too much guidance given by the Interpretation and General Clauses Ordinance Cap 1 either.  In section 3 thereof, the word “public” is defined simply as “includes any class of the public”.

45.I set out below the relevant parts of the evidence as contained in Frankie Lam’s Affirmation and relied upon by the 1^st defendant: -

“4. I am advised and verily believe that the Hong Kong Short Term Patent No. 1150416A (‘ST Patent’) is invalid for the reason that the construction method as claimed in the ST Patent (‘the Construction Method’) was not new/novel as at the date of the application of the ST Patent, namely, 4 August 2011 (‘the Application Date’). The clear and unmistakable directions as to how the Construction Method can and should be implemented had already been disclosed/published in Hong Kong by the plaintiff, SNE Engineering Co. Ltd. (‘SNE’), and in fact used intensively in Hong Kong by SNE for part of the Main Contract prior to the Application Date.

Priordisclosure/publication – Removal of Bored Piles Sub-Contract

7. Hsin Chong first engaged SNE as the sub-contractor for the bored piles removal works. During the tendering stage for the bored piles removal works, SNE submitted a method statement for the same in or about May 2012, which disclosed in detail the Construction Method. There is now produced and shown to me an exhibit marked ‘LKK-2’ a copy of the said method statement submitted by SNE.

8. Based on the said SNE’s method statement, Hsin Chong, jointly with the effort of SNE, prepared the submission papers detailing the Construction Method for the bored piles removal works for MTR to submit to the Buildings Department for approval. The Buildings Department approved the same by way of its letter dated 13 August 2010. There is now produced and shown to me an exhibit marked ‘LKK-3’ a copy of the said letter dated 13 August 2010 from the Buildings Department.

Prior disclosure/publication – Removal of H-Piles Sub-Contract

9. Hsin Chong received the proposed method statement for the H-piles removal works which disclosed in detail the Construction Method from SNE by e-mail dated 9 October 2010. There is now produced and shown to me an exhibit marked ‘LKK-4’ a copy of the said e-mail dated 9 October 2010 and the subsequent e-mails exchanged between Hsin Chong and SNE commenting on the proposed method statement.

10. Based on the said SNE’s proposed method statement, Hsin Chong, jointly with the effort of SNE, prepared and submitted the submission papers detailing the Construction Method for the H-piles removal works to MTR on 14 October 2010 for its approval and submission to the Buildings Department. There is now produced and shown to me marked ‘LKK-5’ a copy of the said Hsin Chong’s submission dated 14 October 2010.

11. The Buildings Department approved the said submission for the H-piles removal works by way of its letter dated 27 October 2010. There is now produced and shown to me marked ‘LKK-6’ a copy of the said letter dated 27 October 2010 from the Buildings Department.

12. Hsin Chong, jointly with the effort of SNE, prepared and submitted a set of revised submission papers for the H-pile removal works to MTR on 15 April 2011 for its approval and submission to the Buildings Department. There is now produced and shown to me marked ‘LKK-7’ a copy of the said Hsin Chong’s submission dated 15 April 2011.

13. The Buildings Department approved the said revised submission for the H-piles removal works by way of its letter dated 6 May 2011. There is now produced and shown to me marked ‘LKK-8’ a copy of the said letter dated 6 May 2011 from the Buildings Department.

14. It is clear to me that the descriptions and diagrams as shown in the documents mentioned above are the same as those in the ST Patent. Further, the descriptions and diagrams as shown in the documents mentioned above are so clear and unambiguous such that the same would enable the Construction Method to be performed by normal competent contractors and construction workers.

15. I refer to paragraph nos. 8 and 10 of the Matsumoto’s Affirmation in which Mr Matsumoto mentioned that SNE had made presentations about the Construction Method to MTR, Dragages and Hsin Chong. I was present at two of the presentations made by SNE to various parties, including but not limited to MTR, Geotechnical Engineering Office of the Civil Engineering and Engineering Department, Highways Department, Ove Arup & Partners Hong Kong Ltd. and Buildings Department on 19 May 2010 and 9 July 2010 introducing the Construction Method for the bored piles removal works and the H-piles removal works for the Main Contract. Mr Sugisaki of SNE had made clear and unequivocal descriptions and directions of the procedures for implementing the Construction Method on site and about the plant and equipment and materials required. I verily believe that the other presentations made by SNE to MTR and Dragages would be along the same or similar line.

16. It is abundantly clear that the Construction Method has already been disclosed/published to various entities (and thus the personnel involved), including but not limited to Hsin Chong, Dragages, MTR, Geotechnical Engineering Office of the Civil Engineering Department, Highways Department, Ove Arup & Partners Hong Kong Ltd. and the Buildings Department prior to the Application Date.

Prior use – Removal of Bored Piles Sub-Contract

17. I refer to paragraph nos. 10, 11 and 12 of the Matsumoto’s Affirmation in which Mr Matsumoto expressly asserted that SNE has used the Construction Method to carry out the bored piles removal works in Hong Kong since as early as 15 September 2010, which was nearly one year before the Application Date.

Prior use – Removal of H-Piles Sub-Contract

18.  I refer to paragraph nos. 10, 11 and 12 of the Matsumoto’s Affirmation in which Mr Matsumoto expressly asserted that SNE has used the Construction Method to carry out the H-piles removal works in Hong Kong since as early as 28 November 2010 which was some 9 months before the Application Date.”

46.I have made some comparisons between some of the materials produced in Frankie Lam’s Affirmation and the Patent.  Without the benefit of an explanation, possibly by expert witnesses, regarding the highly complex and technical methods and procedures as disclosed in the documents, I must confess that I am not in a position to understand their workings fully.  Consequently, I am not in a position to assess whether and to what extent the contents of the Patent are already contained in the documents produced by Frankie Lam.  I give some examples below.

47.When I compare the Claims in the Patent and the contents of the Method Statement produced as exhibit “LKK-2” by Frankie Lam, I am unable to say that they are the same or substantially the same.  The comparison is certainly not made easier by reason of the fact that the Patent is in Chinese and the Method Statement is in English.

48.Under paragraph 6 in the Method Statement which is entitled “Obstruction Removal Schedule”, there is a diagram which shows a number of casings which cut into a bored pile.  I cannot find any similar diagram in the Patent.

49.Furthermore, sketches A to E in the Method Statement, although similar to the drawings in the Patent, are not exactly the same.  Notably, the machine (or its working) shown in sketches D and E in the Method Statement is not shown in the drawings in the Patent.

50.Looking at the other documents produced in Frankie Lam’s Affirmation, they are much more complicated and detailed than the contents of the Patent.  It may be that, at the end of the day and after a proper trial, a court may come to the conclusion that the entire subject‑matter of the Patent has been encompassed in the documents produced by Frankie Lam.  I am, however, not in a position to arrive at such a conclusion summarily at this stage.

51.The 1^st defendant claims that the invention the subject-matter of the Patent was not new as at 4 August 2011 and therefore not registrable because it had been made available to the public by means of a written or oral description and by use. In this regard, the 1^st defendant relies on the disclosure to the 1^st defendant, MTRC, Dragages, Ove Arup (the authorized persons), the Buildings Department and the Geotechnical Engineering Office of the Civil Engineering and Engineering Department and also on the fact that the pile removal works had been carried out on site.

52.I am simply unable to come to the conclusion at this stage that the disclosure (even if it was of the invention the subject-matter of the Patent) to the various persons and organizations would amount to making the same available to the public in the circumstances of this case.

53.Furthermore, I am unable to come to the conclusion at this stage that the fact that pile removal works had been done on site by using the methods and procedures forming the subject-matter of the Patent would amount to making the same available to the public.

54.It is not unarguable that all the persons who have acquired knowledge of the methods and procedures the subject-matter of the Patent would at least have an implied duty of confidentiality.  See, e.g., the case of Catnic v Evans [1983] FSR 401.  This will have to be explored at the trial.

55.In the case of Strix Limited v Otter Controls Limited [1991] FSR 354, it was held by the English Court of Appeal in a patent infringement case that it had never been permissible on a striking out application, where the issues included issues of fact, to conduct a mini-trial on the affidavits in order to avoid the burden of a proper trial.  The course which the judge had adopted, namely, a critical examination of the evidence to see whether the plaintiffs had adduced sufficient evidence directed to the right points and supported by adequately cogent reasoning to counter points taken by the defendants, had been incorrect.  This case is also pertinent to the point made by the 1^st defendant that the plaintiff had deliberately refrained from filing evidence in reply to Frankie Lam’s Affirmation.

Conclusion

56.In all the circumstances, I dismiss the 1^st defendant’s application to strike out the plaintiff’s claim.

57.In the exercise of my discretion, I have also taken into account the fact that there is already an order for early trial with all the necessary directions made by DHCJ Yan, SC.  I believe that it is in the interest of all the parties to have this matter resolved finally as soon as possible.

58.I make an order nisi that the 1^st defendant do pay to the plaintiff the costs of the application to strike out.

59.It remains for me to thank Counsel on both sides for their able assistance.

Mr Douglas Clark, instructed by Robert Lee Law Offices, for the plaintiff

Mr Felix H. Pao, instructed by Chan & Associates, for the 1^st defendant

Excused from court attendance, instructed by Tsui & Co., for the 2^nd defendant

Annexure A

Please refer to HCMP2636/2012 for the relevant appeal(s) to the Court of Appeal.