Litigation in the Brave New World 6: Case Management, Evidence and Trials

Case management: a term that means
different things to different people ...

This final post in Don McCombie's Brave New World series on the European Union's Unified Patent Court (UPC) looks at certain aspects of case management, evidence procedures and trials under the proposed UPC system.  More could be written about these topics, but the author, a patent litigator in the London office of Latham & Watkins, has concentrated on the aspects which, in his s opinion, are the most noteworthy.  This is what Don writes:

Case Management, Evidence and Trials
 Case Management and Evidence
 
The posts in the this series have been based on the 14^th draft of the Rules of Procedure.  A 15^th draft is now circulating online, but as no final version yet appears to be publicly available, all references in this note are to the 14^th edition.  Rule 10 sets out the five stages of proceedings before the UPC.  Stage 1, the written procedure is covered in my third post, and this post focuses on stages 2 and 3, the interim procedure and the oral procedure respectively.

As detailed in the third post, parties are required to provide all evidence in support of their claim/defence, or at least an indication of the evidence that the party intends to rely upon, together with the statements of case at the outset of the case.  This is likely to place a heavy burden on the parties, especially defendants who counterclaim for invalidity, although any party expert evidence may not be required until later in the proceedings (see Rules 181 and 104).

As noted previously, it is intended that a ‘judge-rapporteur’ will have wide-ranging management powers for the active management of UPC cases, which will mainly be exercised during the interim procedure.  The Rules are not very prescriptive, providing the judge-rapporteur with a great deal of discretion; the quality of decision-making will be key to the successful operation of the UPC system.

Once all written pleadings have been exchanged (see Rules 12, 35 and 36), the judge-rapporteur will arrange an ‘interim conference’ (see Rules 101-106), which will be very broad in scope – certainly broader than most ‘case management conferences’ in English proceedings.  Rule 104 lists the main purposes of interim conference, which include enabling the judge-rapporteur to 

·         identify the main issues and determine which facts are in dispute; 

·         explore the possibility of settlement; 

·         issue orders regarding further pleadings and evidence (including party and court expert evidence), experiments and the scope of oral evidence and the questions to be put to witnesses; 

·         hold preparatory discussions with witnesses; 

·         convene separate hearings to hear oral witness evidence, and make all preparations necessary for the oral trial hearing; and 

·         set the value-based element of the court fee.

It is not clear at what stage any decision as to the bifurcation of revocation counterclaims from infringement claims is to be made, although it is likely to be at or before the interim conference.

If many of the above matters are disputed between the parties, it is possible that the interim conference will be a lengthy hearing in itself, potentially little shorter than the one-day trial hearings envisaged under the Rules.

Specific Evidential Issues: Experts

Part 2 of the Rules of Procedure (currently Rules 170-202) relates specifically to evidence procedures under the UPC, although I will not be cover these in great detail here.  A key point to note, however, is the likely role of expert witnesses under the UPC.

Under the current English and US systems, party experts play an absolutely central role, particularly in support or defence of allegations of obviousness.  Court appointed experts are very rare in English patent cases, for example, although scientific assessors have been appointed in recent years in some of the most technically difficult cases.  From experience, a very significant proportion of the work (and costs) involved in preparing an English patent case relates to the identification and interviewing of expert witnesses, drafting expert reports in chief and in rebuttal of opposing party expert(s), and preparing for cross-examination of expert witnesses.  The majority of the trial hearing itself often consists of expert witness cross-examination, largely relating to the validity of the patent(s) in suit.

By contrast, in many continental European systems far less weight is often placed on the evidence of party experts than in common law systems, and oral expert evidence at trial on validity issues is rare in many countries.  Practitioners in England (admittedly, myself included) can get very animated when discussing the need for cross-examination of statements made in expert reports, but given that one of the stated aims of the Rules of Procedure is for trials to be completed within a single day (Rule 113), the scope for lengthy cross-examination is limited.  The Rules of Procedure do allow for the convening of a separate hearing for witness evidence in front of the judicial panel (i.e. unlike US-style depositions - see rules 104(g), 113 and 115), but it appears unlikely that UPC trials and evidence hearings will permit several days of cross-examination as standard, in contrast to the current practice of the English and US courts.

As someone accustomed to the central importance of party expert witnesses in patent proceedings, I see this as a very significant change.  I recognise, however, that practitioners accustomed to, say, German or EPO proceedings may take a different view.  The emphasis to be placed on expert evidence, and the willingness to convene extensive separate evidential hearings may vary between the different local, regional and central divisions, influenced by the legal backgrounds of the individual national judges composing the panels.  If such variations arise, this may be a further factor influencing the parties’ choice of forum.

Trials and Decisions

Oral trial hearings are covered in Rules 111-118.  As noted above, these are intended to be a maximum of one day in duration, although no specific provisions are made for multi-patent trials.

Unless a single judge has been requested by the parties, at least three judges will preside over every UPC first instance trial, comprised of:
·         two local legally-qualified judges and one legal judge from the central ‘pool’ in the case of local divisions averaging more than 100 cases per annum;
·         one local legal judge and two legal ‘pool’ judges in the case of local divisions averaging fewer than 100 cases;
·         two regional legal judges and one legal ‘pool’ judge in regional divisions; and
·         in the central division, two legal judges drawn from different Contracting Member States and one technically-qualified judge from the central ‘pool’ (see Article 8 of the UPC Agreement).

In the case of revocation counterclaims or where the parties so request, an additional technical judge will be allocated to the panel in the local or regional division.

Panels are supposed to deliver a decision on the merits within six weeks on the oral hearing, with issues of quantum of damages and compensation and legal costs being dealt with in separate proceedings (Rule 8).  The form, content and length of judicial decisions varies enormously between Contracting Member States at present, with modern English judgements being particularly encyclopaedic, at least in part as a result of the common law system.  Little guidance on the content of judgments is provided in any of the UPC documents, although Articles 35 and 36 of the Statute of the UPC  do contain some limited provisions, including the possibility of judges expressing dissenting opinions in exception circumstances (see also Article 78 of the UPC Agreement).  Again, the practice of judges may vary depending on the legal tradition in which the members of the judicial panel were trained, although the proposals provide for judicial training regimes and the rules on the composition of panels is intended to provide as much uniformity as possible.

End of the Line 

This is the final post in the series, ending with a ‘fade out’ rather than a bang.  I hope readers have found these posts interesting, or at least informative - I have certainly learned a lot through writing them.  If anyone reading has any comments or questions about the contents of this series, or about the UPC in general, I would be happy to hear from you.