A Scottish Claim Construction Hearing?

Judgment was delivered yesterday by the Outer House of the Scottish Court of Session in Total Containment Engineering Ltd v Total Waste Management Alliance Ltd [2013] CSOH 135 in a matter which may be of great interest to those who love procedural rules as much as they love the substantive law.  The following note has been penned for PatLit by Gill Grassie, a partner in the Scottish IP practice of Brodies LLP (thanks,Gill!).  This is how it goes:

Under Scottish court procedure there is hearing known as a Debate, at which the issues in the case are argued on the basis of what is set out in the pleadings. No evidence is led and the focus is solely on legal arguments. A Debate can be a very effective and cost-efficient tool to decide a case quickly and finally  -- for example on grounds of lack of jurisdiction or title or lack of a relevantly made out case. 

A Debate was employed in this patent case by the alleged infringer to try to secure a dismissal of the action. It argued that the case as pleaded by the pursuer (claimant) on the meaning of the relevant claims meant that those claims did not cover the allegedly infringing equipment and methods. The defender argued that the words in the patent were clear and that their 'obvious meaning' meant there was no infringement as certain integers of the claims in suit were not dealt with in the pleadings. The pursuer's position on the other hand was that it had set out sufficient detail to give scope for a sufficiently wide interpretation of the claims such that the defender's equipment and methods would include every integer and thus infringe. They also argued that it was only appropriate for the court to reach a decision on claim construction after expert evidence was considered.

The IP judge, Lord Malcolm, in a relatively short judgment, agreed with the pursuers, essentially on the basis that it would be inappropriate to decide the meaning of the claims of the patent in this case without some evidence from the skilled man's perspective. There would be the usual opportunity to do this via expert reports, witness statements and other evidence in the lead-up to any Proof (Trial). That should cure any difficulty that there might be with provision to the defender of fair notice of the case against it. On that basis, the application for dismissal was refused and the case will proceed to Trial.

The judge did however also make it clear that in some cases it may be possible for a Debate to be used as a suitable forum to decide the meaning of claims and agree to dismiss a case. These would be where 

'the ordinary meaning of the words used in a patent is so straightforward and clear that the precise basis for a contrary interpretation must be narrated in detail on record (in the pleadings) before an inquiry (a Trial) can be contemplated.' 

Thus there should still be some scope to employ a Debate successfully to get rid of a patent action on the basis of claim interpretation alone.

One further and more general point about this decision is that it demonstrates a willingness by the IP judges to move away from the more traditional approach of insisting on very detailed pleadings which cover all angles to allow a pursuer to proceed to a Trial with evidence etc. This approach is encouraged by the the recently revamped Scottish IP Court management rules. There is much more scope now to rely upon evidence to enlarge upon what is stated in the written case which is a potential benefit. It will tend to speed cases up and will lend itself to costs savings. As long as there is, at the same time, a means to ensure that there is fair notice given of the case to be made at Trial it seems a sensible approach to take to the issue of patent claim interpretation and generally in IP cases as a whole.