“(i) Damages are compensatory. The general rule is that the measure of damages is to be, as far as possible, that sum of money that will put the claimant in the same position as he would have been in if he had not sustained the wrong. (ii) The claimant can recover loss which was (i) foreseeable; (ii) caused by the wrong; and (iii) not excluded from recovery by public or social policy. It is not enough that the loss would not have occurred but for the tort. The tort must be, as a matter of common sense, a cause of the loss. (iii) The burden of proof rests on the claimant. Damages are to be assessed liberally. But the object is to compensate the claimant and not to punish the defendant. (iv) It is irrelevant to a claim of loss of profit that the defendant could have competed lawfully. (v) Where a claimant has exploited his patent by manufacture and sale he can claim (a) lost profit on sales by the defendant that he would have made otherwise; (b) lost profit on his own sales to the extent that he was forced by the infringement to reduce his own price; and (c) a reasonable royalty on sales by the defendant which he would not have made. (vi) As to lost sales, the court should form a general view as to what proportion of the defendant’s sales the claimant would have made. (vii) The assessment of damages for lost profits should take into account the fact that the lost sales are of ‘extra production’ and that only certain specific extra costs (marginal costs) have been incurred in making the additional sales. Nevertheless, in practice costs go up and so it may be appropriate to temper the approach somewhat in making the assessment. (viii) The reasonable royalty is to be assessed as the royalty that a willing licensor and a willing licensee would have agreed. Where there are truly comparable licences in the relevant field these are the most useful guidance for the court as to the reasonable royalty. Another approach is the profits available approach. This involves an assessment of the profits that would be available to the licensee, absent a licence, and apportioning them between the licensor and the licensee. (ix) Where damages are difficult to assess with precision, the court should make the best estimate it can, having regard to all the circumstances of the case and dealing with the matter broadly, with common sense and fairness.”
“i) The assessment of what would have happened in the counterfactual case is not a matter susceptible of precise estimation: ‘one cannot expect much in the way of accuracy when the court is asked to re-write history’: Gerber v Lectra[1995] RPC 383 , 395. ii) The court’s task is therefore to do the best it can with the material available to it: General Tire and Rubber Company v Firestone Tyre and Rubber Company[1975] WLR 819 , 826; Original Beauty Technology v G4K Fashion[2021] EWHC 3439 (Ch) , §75. iii) Where the defendant’s wrongdoing has created uncertainties, those should where necessary be resolved by making assumptions generous to the claimant: Gary Fearns v Anglo-Dutch Paint[2010] EWHC 1708 (Ch) , §70. Green LJ commented to similar effect in NTN Corp v Stellantis[2022] EWCA Civ 16 , §26 that where a claimant has a justiciable right the procedural and evidential rules governing the enforcement of that right should not be so onerous that it makes the right too hard to vindicate. iv) The court should also have regard to the extent to which it was in the power of one or other party to produce evidence on a particular point: see the principle stated by Lord Mansfield in Blatch v Archer (1775) 1 Cowp 63, 65, cited with approval by Lord Bingham in Fairchild v Glenhaven[2002] UKHL 22 ,[2003] 1 AC 32 , §13.”
“It is well established that, for the purposes of the assessment of damages for infringement of a patent, it is not sufficient to show that ‘but for’ the infringement the loss would not have occurred. Rather, it is also necessary to show that the infringement was, as a matter of common sense, a cause of the loss: see Kitchin J in Ultraframe at §[47], point (ii).”
“… ‘but for’ the infringing development samples, and the subsequent infringing commercial C100N product, the overseas sales would not have been made. The key question is, however, whether the infringing supplies were the ‘common sense’ or proximate cause of the overseas sales.”
“163. Equally, however, I do not accept [counsel for Rhodia]’s argument that the fact that the overseas sales were the ‘intended and natural consequence’ of the infringements is sufficient to establish common sense causation. As to intention, [counsel for Rhodia] relied upon Neo’s recorded admission that its intention and objective in importing and supplying development samples and commercial C100N product to JM was to procure a commercial contract with JM. But intention alone, it seems to me, cannot create a sufficiently direct link between infringing and non-infringing sales so as to establish that the latter have been caused by the former, although it may well be relevant to the assessment of whether such a link exists. 164. As to whether the overseas sales were the ‘natural’ consequence of the infringing supplies, if that simply means that those sales were foreseeable, then that is not denied by Neo, but that likewise does not mean that causal link between the infringement and those sales was sufficiently direct. A more direct link is, in my judgment, required for the infringing supplies to be regarded as the ‘common sense’ or proximate cause of the overseas sales. 165. In that regard, it seems to me that the crucial question is the importance of the infringing supply in influencing the customer’s decision to purchase the non-infringing product. That is likely to involve a spectrum of possibilities. On one end of the spectrum, if an infringing product is supplied as part of a single transaction that includes the sale of a non-infringing product, in circumstances where the non-infringing sale is inextricably related to the infringing sale, causation will very likely be established. The sale of convoyed products, as in Gerber v Lectra, where the secondary (non-patented) product is functionally related to the infringing product, or is a spare part for the infringing product, invokes a similar analysis. 166. A less direct link, but one where causation might also be established, would be a case where the non-infringing sale is not inextricably or functionally related to the infringing sale, but where the customer requires both products for a single purpose and therefore seeks to purchase both products from the same source.”
“168. … The mere fact, therefore, that the supply of an infringing product allows the infringer to enter the market for a non-infringing product does not in itself create a sufficiently direct causal link between the infringing and non-infringing sales. Put another way, the fact that an infringement creates an opportunity to sell a non-infringing product does not mean that the infringement causes the non-infringing sale. 169. In similar vein, if an infringing supply brings a product to the attention of a customer, who subsequently decides to purchase a non-infringing version of that product instead of a competing patented product on the grounds that the former is cheaper and more widely-available, then it seems to me that an intuitive analysis would regard the cause of the sale as being the customer’s decision based on price and availability, those factors being decisive in influencing the choice between the two products. The infringing supply would in that example have undoubtedly created the opportunity for the non-infringing sale, but would not be regarded as the common sense cause of that sale. 170. The question is whether in the present case Neo’s supplies of infringing samples and commercial product to JM in the UK were a sufficiently significant driver of the overseas sales that they should be regarded as the ‘common sense’ or proximate cause of those sales, or whether the infringing supplies simply created an opportunity for those sales to be made.”
“172. Much of that evidence was uncontroversial and common ground. The parties were agreed that after JM had satisfied itself that a raw material was in principle suitable for its requirements, it would use that material to make sample catalysts which were then offered to the car makers for testing. In some cases, the car maker would ask for sample catalysts from several suppliers, which would then be tested against each other in a ‘shootout’. Once a car maker had chosen JM’s catalyst, JM would make up prototypes that would then be used for vehicle testing, including in fleet trials. Assuming that the catalysts performed satisfactorily, JM would then commence industrial scale manufacture of catalysts. That would translate to commercial scale orders of the raw materials from its chosen suppliers for each catalyst. 173. It was also common ground that a car maker would select a single catalyst (whether from JM or one of the other washcoaters) for a particular platform (i.e. a particular type of engine manufactured by that car maker). Being the catalyst supplier on that platform would therefore secure the selected supplier years of business for the life of that platform, including making catalysts for spare parts after the platform came out of manufacture.”
“183. JM’s overall purchasing decisions were also, obviously, driven by the orders from its car maker customers, which were not predictable with any degree of certainty. The evidence showed that Neo had hoped to obtain a supply contract with JM, but none was in fact concluded. 184. Rhodia was likewise unable to secure a contract with JM for the supply of HSA20 until 2017. Even then, the agreement (which covered a range of products including HSA20) did not commit JM to any minimum purchases of HSA20 (whether in absolute volumes or in terms of any percentage of Rhodia’s requirements), consistent with JM’s position from the outset that the product was going to be used in new applications that would be subject to ‘a great degree of demand volatility’. Rhodia was therefore in the same position as Neo in that orders would be placed from time to time on an ad hoc basis. …”
“185. It is undoubtedly the case that the infringing supplies of development samples and initial commercial C100N to the UK created an opportunity for Neo to make substantial subsequent overseas supplies of the product. Neo was not only aware of the possibility of those future overseas supplies, but intended that. 186. In the early stages of the development process, however, that outcome was speculative and uncertain. Thus when Neo supplied initial development samples to JM, neither it nor JM knew whether those would lead to any commercial orders whatsoever. JM had first to test the product, to ascertain whether it was suitable for its requirements, and then had to submit catalysts formulated with the product for approval by car maker customers. As the witnesses made clear, in that process JM was frequently competing in a ‘shootout’ with other catalyst suppliers. Any supplies by Neo were therefore entirely contingent upon JM being selected by a car maker using a catalyst formulation that included C100N - in which the car maker’s decision would inevitably turn on the assessment of the performance of the catalyst as a whole rather than any individual assessment of the specific individual components of the catalyst. 187. Even when JM was selected to supply the catalyst for a particular vehicle platform, it would (as I have described above) be necessary to do further vehicle testing including fleet trials before full commercial supplies of the catalyst started. That is why Mr Williams described the 200kg order of C100N on4 December 2013 as an order that would ‘open the door to bulk production’ thereafter if the product proved to be successful in the customer fleet trials that were intended. 188. The chain of events from the supply of samples for testing (whether laboratory testing by JM or catalyst testing by car makers) to commercial orders for Neo’s product therefore involved a series of contingencies resting on decisions taken initially by JM and subsequently by the car makers. 189. It is fair to say that once a catalyst containing Neo’s product was ultimately approved by a car maker for use on one of its platforms, Neo could at that point have expected commercial orders to follow, given the evidence that a car maker would select a catalyst for the lifetime of a particular platform. There are, however, two important points to make about those orders. 190. The first is that there was no overarching supply contract, nor any minimum order guarantee, nor were the orders placed together with orders for UK supplies. Rather, orders were placed depending on the requirements from time to time of each of JM’s production plants (which in turn depended on the orders placed by the car makers for the vehicles on which Neo’s product was a catalyst component). 191. Secondly, where Neo’s and Rhodia’s products were both approved for use in a catalyst on a particular vehicle platform, the volume of C100N ordered from Neo would have depended upon the allocation of JM’s requirements from time to time for that platform as between Neo and Rhodia. That decision would have been made on the basis of factors such as price and capacity, as the evidence set out above indicated. 192. I have concluded on the evidence above that all four of the platforms for which Neo was approved as at March 2015 were platforms on which Rhodia was also qualified. There was no evidence before me as to whether Neo was qualified on any other platforms after that date. On the evidence before me, therefore, all of the platforms for which Neo is known to have been qualified were platforms for which there was a choice as between Neo’s and Rhodia’s products. 193. Drawing together the strands of the above, this is a case in which (i) there were multiple intervening contingencies between the infringing supplies by Neo and the eventual overseas supplies made by Neo; (ii) the orders that were eventually placed for Neo’s product were not made together with or subject to the same contract as any orders for infringing supplies, but were placed for delivery to JM’s various production plants from time to time; and (iii) on the evidence before me, it appears that Neo and Rhodia were dual-qualified on the platforms for which Neo was known to have been approved, providing a choice between the two products. Taking all of those factors together, I do not consider that the infringing supplies of Neo’s product can be regarded as the ‘common sense’ or proximate cause of the overseas sales that were ultimately made.”
“274. Neo is right to say that the notional licence would not have guaranteed it the right to sell throughout the world. But that does not make it impossible to value a licence on the basis pleaded by Rhodia. The identification of a notional licence in this type of case is by definition a somewhat abstract exercise, the purpose of which is simply to form a reference framework for the assessment of a value to be put on the breach of the right in question. The assumption is therefore that there is a willing licensor and a willing licensee, even if the parties would not in practice have agreed a licence on those terms: ... If the result is a rather artificial one, that follows from the nature of the exercise and is not a reason to reject the exercise altogether: the court simply has to do the best that it can on the material available to it. 275. That does not, of course, require the court to ignore a relevant feature of the market on which sales would be made following the grant of the notional licence. On the contrary, the court is required to have regard to the circumstances in which the parties would have found themselves at the time of the hypothetical negotiation: …. If those circumstances would have included the existence of other intellectual property rights which would have reduced the value of sales by the defendant, that is a matter which can and should be taken into account in the valuation of the licence.”
“278. … The problem with Mr Bezant’s evidence was rather that he had valued the licence on the basis that Neo would be providing JM with a globally-licensed product, which meant that JM would not be exposed to litigation risk and would have been willing to pay a higher price than it did in fact pay to Neo. Mr Bezant concluded on that basis (among others) that Neo would have increased pricing power in the counterfactual scenario, and would have been able to negotiate a price similar to the price that Rhodia actually charged. It follows from the preceding discussion that this overstated the rights that would have been granted under the notional licence. 279. Mr Bezant accepted in cross-examination that if Neo did not obtain a global licence, that would reduce the value of the notional licence … 280. It follows that in the present case any valuation of the notional licence would have to take into account the existence of other patents held by Rhodia, and in particular the Chinese patent [which was still in force at the date of the notional negotiation]. 281. I do not, however, agree with Neo that the only way of doing so is to reject Rhodia’s global licence fee claim in its entirety and replace it with a licence fee confined to the licensing of Neo’s development samples. Mr Bezant’s erroneous assumption that the notional licence would give Neo global rights to manufacture and sell did not taint the entirety of his approach to the quantification of the notional licence, but related specifically to the prices at which he assumed that Neo would be able to sell its product to JM. As I set out below, that error can be corrected by taking an alternative reference basis for those prices.”
“Before one can consider the principle on which one should calculate the damages to which a plaintiff is entitled as compensation for loss, it is necessary to decide for what kind of loss he is entitled to compensation. … For this purpose it is better to begin at the beginning and consider the [plaintiff]’s cause of action. … A plaintiff who sues for breach of a duty imposed by the law (whether in contract or tort or under statute) must do more than prove that the defendant has failed to comply. He must show that the duty was owed to him and that it was a duty in respect of the kind of loss which he has suffered. … How is the scope of the duty determined? In the case of a statutory duty, the question is answered by deducing the purpose of the duty from the language and context of the statute …. In the case of tort, it will similarly depend upon the purpose of the rule imposing the duty. … Rules which make the wrongdoer liable for all the consequences of his wrongful conduct are exceptional and need to be justified by some special policy. Normally the law limits liability to those consequences which are attributable to that which made the act wrongful.”
“69. How, then, does one identify a plaintiff’s ‘true loss’ in cases of tort? This question has generated a vast amount of legal literature. I take as my starting point the commonly accepted approach that the extent of a defendant’s liability for the plaintiff’s loss calls for a twofold inquiry: whether the wrongful conduct causally contributed to the loss and, if it did, what is the extent of the loss for which the defendant ought to be held liable. The first of these inquiries, widely undertaken as a simple ‘but for’ test, is predominantly a factual inquiry. … 70. The second inquiry, although this is not always openly acknowledged by the courts, involves a value judgment (‘ought to be held liable’). Written large, the second inquiry concerns the extent of the loss for which the defendant ought fairly or reasonably or justly to be held liable (the epithets are interchangeable). … the inquiry is whether the plaintiff’s harm or loss should be within the scope of the defendant’s liability, given the reasons why the law has recognised the cause of action in question. The law has to set a limit to the causally connected losses for which a defendant is to be held responsible. In the ordinary language of lawyers, losses outside the limit may bear one of several labels. They may be described as too remote because the wrongful conduct was not a substantial or proximate cause, or because the loss was the product of an intervening cause. The defendant’s responsibility may be excluded because the plaintiff failed to mitigate his loss. Familiar principles, such as foreseeability, assist in promoting some consistency of general approach. These are guidelines, some more helpful than others, but they are never more than this. 71. In most cases, how far the responsibility of the defendant ought fairly to extend evokes an immediate intuitive response. This is informed common sense by another name. Usually, there is no difficulty in selecting, from the sequence of events leading to the plaintiff’s loss, the happening which should be regarded as the cause of the loss for the purpose of allocating responsibility. In other cases, when the outcome of the second inquiry is not obvious, it is of crucial importance to identify the purpose of the relevant cause of action and the nature and scope of the defendant’s obligation in the particular circumstances. What was the ambit of the defendant’s duty? In respect of what risks or damage does the law seek to afford protection by means of the particular tort? Recent decisions of this House have highlighted the point. When evaluating the extent of the losses for which a negligent valuer should be responsible the scope of the valuer’s duty must first be identified: see [SAAMCo]. …”
“‘Courts of law’, said Lord Asquith of Bishopstone in Stapley v Gypsum Mines Ltd[1953] AC 663 , 687, ‘must accept the fact that the philosophic doctrine of causation and the juridical doctrine of responsibility for the consequences of a negligent act diverge’. What Lord Asquith meant by the philosophic doctrine of causation, as he went on to explain, was the proposition that any event that would have not have occurred but for the act of the defendant must be regarded as the consequence of that act. In the law of damages, this has never been enough. It is generally a necessary condition for the recovery of a loss that it would not have been suffered but for the breach of duty. But it is not always a sufficient condition. The reason, as Lord Asquith pointed out, is that the law is concerned with assigning responsibility for the consequences of the breach, and a defendant is not necessarily responsible in law for everything that follows from his act, even if it is wrongful. A variety of legal concepts serves to limit the matters for which a wrongdoer is legally responsible. Thus the law distinguishes between a mere precondition or occasion for a loss and an act which gives rise to a liability to make it good by way of damages …. Effective or substantial causation is a familiar example of a legal filter which serves to eliminate certain losses from the scope of a defendant’s responsibility. It is an aspect of legal causation. So too is the rule that the defendant cannot be held liable for losses that the claimant could reasonably have been expected to avoid …. But the relevant filters are not limited to those which can be analysed in terms of causation. Ultimately, all of them depend on a developed judicial instinct about the nature or extent of the duty which the wrongdoer has broken.”
“(1) Is the harm (loss, injury and damage) which is the subject matter of the claim actionable in negligence? (the actionability question) (2) What are the risks of harm to the claimant against which the law imposes on the defendant a duty to take care? (the scope of duty question) (3) Did the defendant breach his or her duty by his or her act or omission? (the breach question) (4) Is the loss for which the claimant seeks damages the consequence of the defendant's act or omission? (the factual causation question) (5) Is there a sufficient nexus between a particular element of the harm for which the claimant seeks damages and the subject matter of the defendant's duty of care as analysed at stage 2 above? (the duty nexus question) (6) Is a particular element of the harm for which the claimant seeks damages irrecoverable because it is too remote, or because there is a different effective cause (including novus actus interveniens) in relation to it or because the claimant has mitigated his or her loss or has failed to avoid loss which he or she could reasonably have been expected to avoid? (the legal responsibility question).”
“55. The sixth question (the legal responsibility question) is in reality a number of separate questions which must be addressed because the law does not impose responsibility on a defendant for everything that follows from his or her act or omission, even if it is wrongful. The questions are, like the duty nexus question, what Lord Sumption JSC has described as ‘legal filters’ (Hughes-Holland, para 20), which have been developed to reflect the court's judgment of the extent of a defendant’s liability for his or her wrongdoing. 56. These legal filters include questions of remoteness of damage. The law requires that the wrongdoing is the effective or substantial cause of a loss before the defendant is liable to compensate for the loss by payment of damages. This concept used to be referred to as the ‘causa causans’ when Latin remained in fashion in legal circles. The legal test of remoteness focuses on the foreseeability of the harm which eventuated … or on whether the harm was of a kind that might have resulted from an accident of a foreseeable nature …. Relevant also to the analysis of effective cause is novus actus interveniens, which is conduct, whether by the claimant or a third party, or a natural event which is a different effective cause and which breaks the causal connection between the defendant’s wrongdoing and the harm …. 57. Other legal filters include (i) contributory negligence on the part of the claimant …; (ii) where the claimant has mitigated his or her loss, obtained any pecuniary advantage by the mitigatory measures, or has failed to avoid loss which he or she could reasonably have been expected to avoid …; and (iii) defences such as volenti non fit injuria, the voluntary assumption of risk, where the claimant has, with full knowledge of the risk, freely and voluntarily agreed to incur that risk.”
“(1) One must distinguish between the wrong and the damage flowing from it. (2) Any damage which foreseeably flows from the wrong is recoverable. (3) In some cases there may be policy reasons for restricting damages even where the damage foreseeably flows from the wrong.”
“Given that one can foresee these losses, why should the law not provide that the defendant must recompense the plaintiff? and all the more so where the defendant gets a corresponding benefit from his wrong …. If that benefit were large enough it might pay the defendant to commit the wrong. Suppose, for instance, that the ongoing value of service contracts was much greater than the value of the original sales. Then, since exemplary or additional damages are not available, it would pay to infringe. I think this is a very powerful policy reason for holding that these ancillary damages are recoverable. The supposed counter-policy is that articulated by Goff L.J. [in Polaroid Corp v Eastman Kodak Co[1977] RPC 379 ]: that one is thereby setting up a wider monopoly than that provided by the patent. However upon analysis one can see this is not really so. The patentee has no monopoly in any of these matters. Anyone could have made peel-apart cameras or film, or sell service or parts, or sell post-expiry. There is no question of setting up a monopoly at all - there is only an investigation into the effect of the invasion of one.”
“I hold that infringement of patent is another case where a secondary loss can be recovered, provided that secondary loss is a foreseeable consequence of the infringement. The secondary loss may consist of sales of unpatented items which go with the patented item as a commercial matter (here the CAD, service, and spares) and such loss as the patentee can establish results from the infringer establishing a business pre-expiry. In all these cases it remains critical that the patentee can establish the factual basis: that his loss is caused by the infringement and foreseeably so. In so holding I feel fortified by the reasoning in the United States courts where this kind of head of damage is regularly allowed provided the plaintiff can establish a sufficient nexus between the infringement and the damage.”
“It is not enough that the loss would not have occurred but for the tort; the tort must (for present purposes at any rate) be, as a matter of common sense, a cause of the loss.”
“My answer would be, at first impression, that the Patents Act is aimed at protecting patentees from commercial loss resulting from the wrongful infringement of their rights. That is only a slight gloss upon the wording of the statute itself. In my judgment, again as a matter of first impression, it does not distinguish between profit on the sale of patented articles and profit on the sale of convoyed goods.”
“Viewing the cases as a whole, I cannot find any rule of law which limits the damages for infringement in a patent case in such a way as to exclude the loss claimed by the patentees in the present case. … There is no dispute as to causation or remoteness in the present case; nor can I see any ground of policy for restricting the patentees’ right to recover. It does not follow that, if customers were in the habit of purchasing a patented article at the patentee’s supermarket, for example, he could claim against an infringer in respect of loss of profits on all the other items which the customers would buy in the supermarket but no longer bought. The limit there would be one of causation, or remoteness, or both. But the present appeal, in so far as it seeks to restrict the scope of recovery, should be dismissed.”
“I know however of no principle that, whenever one interest of a plaintiff has been wrongfully damaged, consequential damage to another interest of the plaintiff is necessarily recoverable. In each case it has to be considered whether, as a matter of policy, the latter damages should be recoverable in an action founded upon the wrongful invasion of the plaintiff's first interest. I know of no authority which enables a plaintiff, suing for damages for infringement of his copyright, to recover as part of such damages loss he has suffered because the commission by a third party of the tort of passing off has been facilitated by the defendant’s infringement of his copyright; and as a matter of policy it is, in my judgment, undesirable to extend the scope of recoverable damages in an action for infringement of copyright in this way. The law of copyright is a self-contained branch of the law, concerned with the protection of a particular proprietary right. The provisions regulating the protection of that right, including (for example) those which provide for strict liability or liability based on fault are framed with regard to a particular interest, viz. the proprietary right in question. It would be undesirable as a matter of policy to extend the statutory remedies available for the protection of that interest to the recovery of damages in respect of the invasion of a different interest.”
“29. … I return to the question: what is the basis upon which damages for breach of copyright are awarded? The question cannot be answered without consideration of the nature of the wrongdoing which breach of copyright represents. The nature of the wrong is clear enough. In a case where the copyright work is a written document, it consists in the unauthorised use of the actual text of the document. It does not consist in pirating the idea or ideas to be found in the text. … 30. That being so, the true point in this appeal is not to be found in [counsel for the appellants’] elaborate arguments about foreseeability and breaks in the chain of causation. It is that on the facts relating to Powerhouse the respondents have suffered no damage arising from the unauthorised deployment of the actual text of the CAA, as opposed to the idea or ideas which it contains. … 34. In the circumstances, the appeal must in my judgment be allowed on the simple ground that the claimed loss is not attributable to any breach of copyright: not because it was unforeseeable or otherwise too remote for the reasons urged by [counsel for the appellants], but because in principle, and for the reasons I have given, it lies beyond the scope of protection which the law of copyright affords.”
“This reasoning demonstrated the intimacy between the nature of the wrong alleged and the damage which by law may be attributed to it. It serves also to dispel the notion (if anyone entertains it) that the law’s different approaches to causation, according to the kind of case before the court, is in any sense random; the question is always a constant one, namely what is the loss for which the defendant should justly be held responsible. The nature of the cause of action which the claimant pleads and proves will often determine the question’s answer, and will always condition it. In this case, with respect, the Master’s mistake was to forget the nature of the cause of action in copyright.”
“The head of damage claimed here in no way turns on the fact that the exact text was copied. It is not attributable at all to the precise nature of the text used by the defendants. So it did not flow from the fact that the exact text was taken – it was not caused by the infringement.”
“Two of our colleagues contend that the Patent Act does not permit damages awards for lost foreign profits. … Their position wrongly conflates legal injury with the damages arising from that injury.”
“1. Members shall ensure that enforcement procedures as specified in this Part are available under their law so as to permit effective action against any act of infringement of intellectual property rights covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements. These procedures shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse. 2. Procedures concerning the enforcement of intellectual property rights shall be fair and equitable. They shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.”
“1. Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays. 2. Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.”
“Member States shall ensure that the competent judicial authorities, on application of the injured party, order the infringer who knowingly, or with reasonable grounds to know, engaged in an infringing activity, to pay the rightholder damages appropriate to the actual prejudice suffered by him/her as a result of the infringement. When the judicial authorities set the damages: (a) they shall take into account all appropriate aspects, such as the negative economic consequences, including lost profits, which the injured party has suffered, any unfair profits made by the infringer and, in appropriate cases, elements other than economic factors, such as the moral prejudice caused to the rightholder by the infringement; …”
“121. The springboard jurisdiction has been recognised in patent cases. In a proper case the court has jurisdiction to grant an injunction which restrains a defendant from selling a product for a period after the patent has expired. For example in Generics BV v Smith Kline & French Laboratories Ltd (C-0316/95, [1997] R.P.C. 801,[1998] 1 CMLR 1 ) the European Court of Justice heard a reference from the Netherlands in which the Dutch court had granted an injunction to restrain Generics from selling a drug (cimetidine) for 14 months after the expiry of the relevant patent as a consequence of pre-expiry acts of infringement. Generics had submitted a sample of the product to the regulator in order to obtain a marketing authorisation. That act had been an act of patent infringement. As the ECJ put it (at [27]) ‘if Generics had respected SKF's patent right, it could not have submitted the cimetidine samples until that patent had expired. SKF would thus have been able to continue to market its product without competition [ … ] throughout the period required to obtain the marketing authorisation.’ The remedy granted by the Dutch court was not disproportionate ([28]) and the ECJ held that ‘an order of a national court prohibiting the infringer from marketing such a product for a specified period following expiry of the patent in order to prevent him from deriving any unfair profit from his infringement’ was not an impermissible barrier to intra-Community trade contrary to then art.30 and 36 E.C. ([29]). … 130. I am satisfied that the court can, in a proper case, make an order of the kind sought by Convatec. The cases make that clear. As for the Enforcement Directive, a springboard order does not fall neatly within the words used in either art.10 or 11 of the Enforcement Directive but in a proper case it would fall within art.3. Such an order can be fair and equitable, effective and dissuasive. The ECJ (as it then was) recognised in Generics that such a remedy can be proportionate and is not a barrier to intra-Community trade. Moreover it seems to me that the scope of the damages available in art.13 (appropriate to the actual prejudice suffered) would include the sort of damages recognised as being available in Gerber. If damages are in principle recoverable then I do not see why an injunction should not be able to be granted to prevent the harm occurring in the first place. …”
“Cerium oxide is but one part of a highly complex catalyst system, which will need to function in combination with the other parts.”
“One of the reasons that OEMs were reluctant to change formulations was that it is not possible to fully define a catalyst by its specification. The performance characteristics of a catalyst are like a fingerprint and the fingerprint is unique to that catalyst formulation and process used to make it. All of the emissions calibration that takes place ends up with a system that is tuned around the catalyst combinations that are in the system. Catalyst manufacturers are quite secretive about their formulations and will not disclose the recipe to the OEMs.”
“Proceedings for infringement by exclusive licensee. (1) Subject to the provisions of this section, the holder of an exclusive licence under a patent shall have the same right as the proprietor of the patent to bring proceedings in respect of any infringement of the patent committed after the date of the licence; and references to the proprietor of the patent in the provisions of this Act relating to infringement shall be construed accordingly. (2) In awarding damages or granting any other relief in any such proceedings the court or the comptroller shall take into consideration any loss suffered or likely to be suffered by the exclusive licensee as such as a result of the infringement, or, as the case may be, the profits derived from the infringement, so far as it constitutes an infringement of the rights of the exclusive licensee as such.”