Tuesday, 25 February 2014

No, you can't be served with any more pleadings, judge tells defendants

Last Friday Mr Justice Mann, sitting in the Patents Court, England and Wales, gave a ruling in a hearing relating to the service of further pleadings in a patent infringement action. The case, Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA & others, is not reported on BAILII but a note has been published on the subscription-based Lawtel service.

The patent in this action, which related to electromagnetic surveying for oil, had already been the subject of a previous challenge to its validity. Electromagnetic Geoservices ASA (EGA) claimed that the defendants had infringed the patent. The first two defendants had not served their defences and sought an extension of time. The third defendant had to be served out of the jurisdiction and that had not yet been achieved. According to the defendants, one of the reasons why the defences had not been filed was the uncertain nature of the case on infringement. Accordingly the defendants sought documentation in relation to the previous proceedings, as well as further particulars of the mode of operation which was alleged to infringe. Correspondence between the parties culminated in two letters from EGA's solicitors which gave particulars as to the manner in which the defendants' operations were alleged to infringe the patent, with the caveat that the position might be reconsidered following disclosure and in the light of any further information arising.

In these proceedings the defendants argued that EGA' case on infringement should be embodied in a pleading in order to achieve clarity and so that the defendants (i) could see whether there was a reasonably arguable case, (ii) could assess the shape of the action and formulate their own case, and (iii) could prepare their product and process description (PPD).

Mann J refused the application on the basis that, in the circumstances, the letters from EGA's solicitors were likely to be treated in the proceedings as though they were a pleading. In his view:

* since the defendants' operations took place on ships in the middle of the sea, EGA was relying on publicly available materials in order to give the best particulars it could of the allegedly infringing acts.

* what was requested by the defendant was something that was not usually done in patent cases and which appeared to be unnecessary in the circumstances. The letters from EGA's solicitors appeared to be full, frank and comprehensive. While the case set out in them was subject to variation after disclosure, that would be the normal position with a pleading.

* the defendants were sufficiently tied down to their case in the correspondence, and it would be a waste of time and costs to require a pleading -- there being nothing to be gained from the small degree of additional fixing which would result from a pleading.

* if the defendants wanted to apply to strike out the claim, they had the information on which to make a decision.

* if a pleading gave better particulars, the defendants might even be slightly worse off from that point of view and EGA would not be prevented from adducing further information to meet any strike-out application. 

* it was better not to depart from the usual course in patent actions which turned on issues of construction.

At this distance from the case and with no further facts, it's difficult to know whether the defendants were trying a crafty ploy or genuinely seeking clarification of EGA's claims. Either way, the court appears to have taken an approach which is both cautious and pragmatic.

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