PCC Page 20: Back to being Cautious, and not letting the experts loose

Is the writing on the wall
for experts in IP trials?

The PatLit PCC Series, elegantly drafted by the Chartered Institute of Patent Attorneys (CIPA), seeks to explain how litigation works in the recently-revamped Patents County Court (PCC) for England and Wales, taking as its theme a dispute between Cautious Co and IPOff Ltd as to whether IPOff has infringed the IP rights of Cautious in its robotic octopus. In this episode, the 20th, CIPA President Alasdair Poore considers whether expert evidence is really going to be necessary:

Cautious's patent attorney has written to Cautious about the defence and appropriate evidence in relation to IPOff’s claim that Cautious patent is invalid.  He is now writing about the need for expert evidence in response to relation to IPOff’s allegation that the UK and Community unregistered design rights are invalid because (a) the former is commonplace and (b) the latter does not create on the informed user a different overall impression from the prior art, especially wild octopuses.  However, before writing on this, he reflects on the wisdom of holding fire on his last letter: 

“Dear Cautious, A narrow escape – not writing that letter telling IPOff’s solicitor where to file his counterclaims.  He would have taken great pleasure in pointing out that with effect from April 1^st (why do they choose these dates for important events?), claims in the Patents County Court will be issued in the Chancery District Registry (instead of the Central London County Court).  That is in the Thomas Moore Building in the Royal Courts of Justice – just where he was issuing his claim for threats!  [More news, including a map, on the details of issuing proceedings in the Thomas More Building closer to the time.] …” 

The above text contains a salutary reminder of two general principles in litigation.  The first is that it is rarely wise to send out the first letter that comes into your head.  For stress-relieving purposes it may be appropriate to have a pin board where you can pin up all those letters, as long as it is well out of sight of clients. 

The second is that every letter should be written with the thought, at the back of the mind, of what it would sound like if read out in open court (even if, in relation to proceedings in the PCC, this is actually a rather unlikely eventuality). 

There is some other organisational news from the PCC User’s Committee meeting last night:

·         PCC Guide: this is nearly in final form and is very likely to be available in the week.  The Guide will not include model pleadings, or even sample pleadings, but the intention is still to make available examples of pleadings as soon as possible.
·         Location of the PCC: The proposed move of the PCC to the Rolls Building is scheduled for around October (the same as before, although there has been some slippage in having the building ready).
·         The limit on damages of cases in the “special jurisdiction” (patents and designs), will come into effect on June 14  (Article 1), The Patents County Court (Financial Limits Order) 2011.  

There are transitional provisions (Article 3): the limit will not apply to cases where the proceedings were issued in the PCC before that date, or to cases which are transferred or the request for transfer for which, from the High Court, is before that date.  The limit is £500,000 (excluding interest, other than interest payable under an agreement, and costs: Article 2).  There is still no limit on damages in PCC claims other than in the special jurisdiction. 

“… As I mentioned earlier, we have to consider the allegations that the unregistered design right is invalid.  The UK right would be invalid if it were commonplace; the Community right if it is not really any different from the previous designs IPOff have referred to, namely live octopuses. 

In the discussions on the new rules for the PCC, there was some suggestion that if expert evidence was necessary then it might not be suitable for hearing in the PCC.  I am sure that is not the case generally however, as the rules specifically contemplate expert evidence on specific issues. 

Nevertheless, bearing in mind the nature of these designs, and especially that they are really ones intended to be seen by any Tom, Dick or Jennifer (and equally live octopuses are also seen by the same sort of people), our starting point should be not to have any expert evidence. …” 

It is worth noting that, in recent cases, at least in relation to registered designs, the High Court has become increasingly sceptical about the value of expert evidence.  So, some salutary reminders from shortly-to-be-retiring Lord Justice Jacob: 

“I do not think, generally speaking, that 'expert' evidence of this opinion sort (ie as to what an ordinary consumer would see) in cases involving registered designs for consumer products is ever likely to be useful. There is a feeling among lawyers that one must always have an expert, but this is not so. No-one should feel that their case might be disadvantaged by not having an expert in an area when expert evidence is unnecessary. Evidence of technical or factual matters, as opposed to consumer 'eye appeal' may, on the other hand, sometimes have a part to play-that would be to give the court information or understanding which it could not provide itself.”   

Isaac Oren v Red Box Toy Factory Ltd [1999] FSR 785 at 79 quoted again in Thermos Ltd v Aladdin Sales and Marketing Ltd [2000] IP & T 41 at 42–43, [2000] FSR 402 at 404 

and 

"It follows that a place for evidence is very limited indeed. By and large it should be possible to decide a registered design case in a few hours. The evidence of the designer, eg as to whether he/she was trying to make, or thought he/she had made, a breakthrough, is irrelevant. The evidence of experts, particularly about consumer products, is unlikely to be of much assistance: anyone can point out similarities and differences, though an educated eye can sometimes help a bit. Sometimes there may be a piece of technical evidence which is relevant—eg that design freedom is limited by certain constraints. But even so, that is usually more or less self-evident and certainly unlikely to be controversial to the point of a need for cross-examination still less substantial cross-examination". 

Philips Electronics BV v Remington Consumer Products [1998] RPC 283 at 318 

Given that the questions in relation to unregistered designs are very similar here to these ones, it seems the court should (and Cautious patent attorney will) take a robust approach that one can do without the experts.