PCC Page 15: How secret is my technology?

In this, the 15th in the series of Patents County Court (PCC) Pages, we continue the saga of the litigation between Cautious Co and its arch foe IPOff Ltd, which Cautious accuses of infringing various intellectual property rights in its robotic octopus.  PatLit thanks the Chartered Institute of Patent Attorneys (CIPA) and in particular its President Alasdair Poore, for supplying these episodes.  To continue the tale:

Innocent Pilates, director of IPOff wrote to his solicitor last week suggesting that threats proceedings brought in the High Court (Intellectual Property Court) would be an effective way of pushing Cautious off the rails.  As set out below he also has some things to say in relation to IPOff’s defence of the claim before the PCC for patent and unregistered design right infringement:

“Dear xxxx,

[discussion of threats etc ...]

In the meantime here’s the statement you wanted to show that Robot Octopus had nothing to do with Cautious – it's our independent design.  It’s not as though they are even very similar.  I’ve done a note highlighting the differences we put in, though I must say that their table showing the similarities is pretty impressive.  Just that those features are all old hat. 

Also on the patent issues, I don’t want to supply a description of our software to Cautious.  We have some really good ideas and they will just copy them; and, in this field, if our customers think that another player has the same ideas for predicting winners, they will not want our product anyway.  So you will have to tell the judge that we can’t provide the particulars.

Otherwise I have set out the comments on the prior art – added them to the claim table used by Cautious as you requested, although I think that some of their “elements” are just contrived to make the claims look as though they cover our product.  I’ve also done a note of what’s blindingly obvious in the field [a.k.a. common general knowledge].  … .” 

This letter throws up a number of issues for IPOff’s solicitor.

Firstly, it appears that IPOff’s design is not independent.  Why else would they mention the differences they have “put in”.  This raises a potential question as to whether IPOff’s solicitor should be involved in preparing a statement of case which effectively relies on independent development.  As is often the case this may simply be a misunderstanding of what IPOff meant.  The solicitor is probably not under a duty (to the Court) (Code of Conduct for Patent Attorneys, applicable to patent attorneys, Rule 5 read with Rule 14) to find out the true position from IPOff – although they might be negligent to the client if they failed to do so, and advise on it.  However, if they do find out that in fact the client did not independently develop the design, but used Cautious’ product and designed around it, it is clear that the solicitor should not be involved in putting a case which is inconsistent with that, even in a statement of case signed by the client (Code of Conduct for Patent Attorneys, applicable to patent attorneys, Rule 14, and (Patent Attorney Litigator Code of Conduct, XI(a)).  Of course there could be a middle ground in which the original design was independent, but modifications were made in the knowledge of Cautious design.

Secondly, there is a legitimate concern about confidentiality of technology.  This has been addressed in previous patent cases – the Court agreed relevant technology be disclosed only to the advisors or experts (Warner-Lambert Co v Glaxo Laboratories Ltd [1975] RPC 354, and see the discussion in eg Koger Inc v James O’Donnell [2009] IEHC 385).  However, the court is likely to take a critical view.  Is this really necessary and appropriate.  A party is as a general rule, entitled to see the case against them (see cases cited above and Roussel Uclaf v Imperial Chemical Industries Plc [1990] RPC 45 at 54).  In High Court proceedings a party is normally be required to give disclosure (discovery), and information supplied under disclosure obligations is subject to specific confidentiality obligations (CPR31.22(1)).  It is important to ensure that at least these obligations are in place in relation to a confidential process description as they do not automatically apply to information given voluntarily.  In some cases it may be appropriate to go further, and restrict information to advisors, but, unless the other party agrees, the Court will need to be convinced.

Thirdly, in relation to setting out the facts, matters and arguments, we can see there is a danger of different issues becoming confused.  The issues of independent development (which require either clear evidence of lack of access, or a good explanation of how similarities occurred), substantial reproduction and that the design is commonplace (for the UK unregistered design) and overall impression for validity and infringement purposes) are all tied together in the first paragraph of IPOff’s letter.  It is important to keep these separate in a statement. No end of difficulty is created in statements of case where an attempt is made to plead two slightly different issues at the same time.  Think about: “assuming Cautious disagrees, how would they respond to each issue”?  If you mix up issues, the response may well be mixed up and then it can become very difficult to extract what are the real differences between the parties.

Finally, at least two elements of IPOff’s defence – that the designs are commonplace and that they are based on common general knowledge -- are elements which Mr Pilate may well not be able to say from his personal knowledge (and nor can anyone else from IPOff).  They think this is the case and should (by now) have talked to an expert who will be able to confirm it.  It could be difficult for Mr Pilate to sign a statement of truth in that case, and perhaps the right approach is to foreshadow the evidence by saying that this is the defendant’s case or that they will rely on or contend that this is the case, to be followed by evidence at the appropriate stage.