The dispute centred on tap designs for bag-in-a-box wine
packaging. Smurfit told a customer of rival DuPont that it had a
patent which its competitor was infringing, which caused the
customer to slow down in its introduction of DuPont's tap
systems.
The High Court agreed with DuPont's claim that Smurfit's actions
slowed the process down and awarded damages for lost earnings for
that slowdown. The companies will attempt to agree what those
damages are.
The tap in question was DuPont's first attempt at making a wine
box tap. Smurfit had been for some years been making the Vitop tap
for some years, which was seen as effective but expensive.
DuPont started to create the Liqui-sure tap and in 2003 agreed
with wine distributor Constellation that it would use the new tap
as long as tests produced acceptable results.
Those tests proceeded for two years and it was not until June
2005 that Smurfit told Constellation that it would take action over
the tap, which it believed infringed a patent it held for the Vitop
tap.
Monsieur Didier Pontchar of Smurfit told Constellation that it
would take action if the taps were used commercially, confirming a
conversation later in an email which said: "it is our lawyers'
opinion that European patent infringement as well as unfair
competition could be sufficient reasons for us [to] counter this
threat in court," said the email. "According to him, we could
immediately initiate seizure of stock of wine BIB [Bag in
Boxes] with counterfeit taps in supermarkets and bars. These
distributors would, we assume, seek compensation relative to their
wine supplier who is responsible for goods sold."
“Although the ensuing legal battle might take time, we would
have the right to intervene to defend our product and to initiate
further seizure of stock, while awaiting the final outcome through
the courts," he claimed.
Smurfit's patent claim was eventually tested in court. The High
Court found that the patent was valid, but that DuPont's invention
did not violate it. DuPont then sued Smurfit for making a
groundless threat that interfered with its business.
Smurfit at first contested that the threat had any effect, but
went on to concede that it did, but that the effect was not as
serious as DuPont claimed.
Roger Wyand QC, sitting as a Deputy High Court Judge, said that
the threat of patent litigation did affect Constellation's adoption
of DuPont's tap, and that it would have been used earlier but for
the threat of litigation.
He also said that he had to consider the fact that the tap was
developed more slowly and as a lower priority because of the threat
of litigation, so the gap between when it might have been finished
without litigation and when it was actually used had to be
estimated.
"The question is whether, if the project had not been accorded
low priority, that date would have been earlier. On the evidence, I
believe that it would," he said.
He said that one of the wine ranges would have started using the
tap four months earlier if the development had not been slowed, and
that another Constellation range would have taken the taps five
months earlier.
The judge laid out some of the factors affecting what Smurfit
should pay DuPont and left the two companies to negotiate a
settlement, saying that he will hear arguments on one if it cannot
be reached.
