Patents – infringement – joint tortfeasor – whether defendant acted in way which furthered commission of tort by another pursuant to common design – no evidence of knowledge or intention of infringement
P was engaged by D1, a contractor for pile removal works at a site for a railway project, as a subcontractor for the works. P engaged D2 to supply machinery and operators for the works. The works did not progress at the rate anticipated and D1 considered terminating P’s subcontract. P then successfully applied for the registration of a Hong Kong short-term patent (the “Patent”) under Pt.XV of the Patents Ordinance (Cap.514) (the “Ordinance”) for a “rotator and wedge” method of extracting building piles from the ground (the “Method”). D1 terminated the subcontract and P commenced proceedings against Ds, claiming that the key concepts of the Method were the use of a wedge as a jamming and immobilising device between the pile and the internal surface of a steel casing; and the trapping of the pile inside the casing, which rotated causing the pile to twist and to break at a predetermined point. P contended that D1 used the Method to continue with the works at the site without P’s permission and D2 participated in such infringement. The Judge dismissed P’s claims, holding that the specification of the Patent did not disclose the invention in a manner sufficiently clear and complete for it to be performed by a person skilled in the art; and alternatively, the Method had been made available to the public and was not new. P appealed.
Held, dismissing the appeal, that:
- P had to plead a case of common design if it wished to make D2 a secondary party as a joint tortfeasor, and had failed to do so. In any event, the Judge was right in rejecting such contention. To establish accessory liability in tort, a defendant must have acted in a way which furthered the commission of the tort by another pursuant to a common design to do or secure the doing of the acts which constituted the tort. The required limitation on the scope of liability, founded on a pragmatic concern to limit the propensity of the law of tort to interfere with a person’s right to things which were in themselves entirely lawful, was achieved by the combination of active cooperation and commonality of intention. D2 was a supplier of equipment and operators. There was no evidence that D2 knew the equipment and operators were being used to commit an infringement of the Patent or that D1 was infringing the Patent. The mere supply of equipment which was known to be capable of being used to commit a tort did not suggest intent.