OOO Abbott v Design & Display [2017] EWHC 932 (IPEC)
This was the retrial of an account of profits in a patent infringement case. The account had been remitted to the IPEC by the Court of Appeal who had allowed an appeal from the judgment in the first account ([2016] EWCA Civ 95). On the first remitted issue, the court held that a losing defendant in a patent action should also account for profits from sales of goods other than those which precisely embody the invention where the invention relates to an essential feature of those goods. A feature is essential in this sense if it is functionally and/or commercially the most significant part of the whole. This is not a binary test: in certain cases the views of purchasers as to whether the relevant feature is essential may vary, in which case the infringer must account for the profit on a proportion of the entire articles.
On the second remitted issue, the court clarified that in an account of profits a proportion of the infringer’s general overheads may be deducted from gross relevant profits unless (a) the overheads would have been incurred anyway even if the infringement had not occurred, and (b) the sale of infringing products would not have been replaced by the sale of non-infringing products. On the facts, the court held that the defendant was entitled to deduct general overheads from its profit on the infringing business, although all payments to its directors were excluded from such deduction.
Chris Aikens appeared as sole counsel for the Claimants