Anan Kasei v Neo [2022] EWHC 708 (Ch)
An inquiry into damages was ordered following the finding of infringement by Neo of Rhodia’s patent for high surface area (“HSA”) cerium oxide, a product used in the manufacture of catalyst systems for vehicle exhausts. The issue was the extent to which Rhodia can recover damages for Neo’s supply of its C100N product to a customer, Johnson Matthey (“JM”), outside the UK displacing sales of Rhodia’s HSA product HSA20. The losses claimed by Rhodia (from sales outside the territorial scope of the patent) were said to have been caused by (i) Neo’s supply of infringing ‘development samples’ to JM in the UK between 2011‑2013, and (ii) by commercial supplies of Neo’s C100N product within the UK. Rhodia contended that the overseas sales were caused by Neo’s infringing supplies within the UK. Those sales were vastly greater than the UK sales, and Rhodia claimed damages (lost profits, alternatively a reasonable royalty) amounting to over €24m.
Neo argued that it ought not to have to pay any damages at all (having already paid damages for UK sales): (i) the overseas sales fell outside the territorial scope of duty of the patent; alternatively (ii) they were not caused, sufficiently proximately, by the infringing UK supplies; alternatively (iii) that Neo could have supplied a non-infringing alternative to JM in the UK. Neo also argued that JM had not proven that it had sufficient capacity to supply Neo’s volumes during the relevant period. Neo argued that reasonable royalties for C100N sales were precluded by the settlement of Head 1, and that JM’s claim for global royalties under a UK-only licence was unsustainable.
Bacon J heard the trial in person between 28 January and 11 February 2022. The Judge decided that Neo’s infringement was not the “common sense” cause of the overseas sales and Rhodia’s claim therefore failed.
Hugo Cuddigan QC and Adam Gamsa appeared for Neo, instructed by Bird & Bird LLP.