Parainen Pearl Shipping v Kristian Gerhard Jebsen Skipsrederi [2018] EWHC 2628 (Pat)

11 October 2018

Tom Moody-Stuart QC and Lindsay Lane appeared for the Claimants in their claim for a declaration of non-infringement of a patent for a pneumatic cement discharge system. James Abrahams QC, alongside Kathryn Pickard of 11 South Square, appeared for the Defendants.

The Claimants own a vessel incorporating a pneumatic cement discharge system in accordance with the First Defendant’s patent. The vessel had previously been owned by the Second Defendant but had run aground in November 2008. The vessel was declared a total constructive loss and was subsequently sold to two successive undertakings before being acquired by the Claimants.

The Claimants argued that the Defendants’ patent rights were thus exhausted. The Claimants did not dispute that the discharge system fell within the patent and did not contest the patent’s validity. The case instead turned on the nature of the work done to make the discharge system usable again after its extensive flooding. The Defendants argued that the system had been destroyed and that a new system had thus been manufactured by the Claimants. The Claimants, however, contended that the system had merely been repaired.

The Court found in favour of the Claimants, finding that the Defendants’ patent rights had been exhausted when the vessel was sold. It was held that the work done to the system amounted to repair rather than manufacture. A number of the system’s components had been replaced but the court held that these amounted to subsidiary rather than substantial components.

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