Tuesday 8 March 2011

PCC Page 19: Time for review

The PatLit PCC Series, lovingly crafted 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 19th, CIPA President Alasdair Poore reviews the situation so far, with particular reference to evidential and procedural matters:
Cautious’s claim for patent and unregistered design right infringement before the PCC is progressing.  His patent attorney is now preparing a reply and defence to counterclaim, but has yet to finalise the reply in relation to unregistered design right infringement.  He is turning his mind to the next stages in the proceedings – particularly as a preparation for the case management conference.  This is an appropriate moment for a detailed review of the claim, in order to ensure that all the necessary elements are in place, all the appropriate evidence will be available, any other procedural steps which might be required at the case management conference are reviewed, and any tactical moves are kept in mind.

The first stage is to go rigorously through each element necessary to succeed in the claim. There is a patent, the registered proprietor is (and was at all relevant times) Cautious Co., the patent is in force – all these are admitted in this case.  A copy of the patent has been provided with the pleadings, with the relevant claims included. 

Then there is the allegation that IPOff have supplied a product in the UK (the Robot Octopus) – this is admitted. Cautious have a sample of the Robot Octopus and assert that it falls within the scope of the identified claims of the patent: this is not admitted.  Accordingly,evidence of what the Robot Octopus is or does will be required.  This evidence may be based on the product description, if that description is accepted, or it may be necessary to put in evidence a sample and any necessary analysis in order to determine what its features are. (nb this can be a bit of problem in the internet era.  The temptation is to launch proceedings on seeing a Web advert – and then there can be problems proving exactly what that advert advertises, unless a trap purchase has been made).  At present what the product is/does is unclear as IPOff have refused to provide a product description unless it is confidential and not disclosed to Cautious.  If the product description cannot be agreed, the parties will have to agree a sample/example of the product, or Cautious will have to prove an example of what IPOff have been selling.  Secondly, Cautious will have to provide sufficient evidence to justify the interpretation of the claim(s) on which they are seeking to rely.  That is a matter of construction, but can be assisted by possible expert evidence.

Then, on the patent claim, Cautious’ patent attorney turns to the defence and counterclaim: that the patent (or its relevant claims) is invalid on the grounds that the invention is obvious and not sufficiently described.  IPOff rely on two pieces of prior art – both of which have been included with the defence and the content of which are admitted.  However, they are likely to have to rely on some expert evidence as to how these would be understood by a person skilled in the art and the extent to which the step from each of those documents would be obvious – based on common general knowledge  Cautious will want to have evidence available to rebut these arguments, in terms of what the documents disclose, what is the step from the embodiments described in those documents to the invention, what is common general knowledge, whether the difference would be obvious – and a similar approach in relation to insufficiency.

Having reviewed this, and identified what evidence is required, he/she will need to check that the statement of case supports each of these (or whether any amendments are necessary), and identify what is already included as evidence as part of the statement of case, and therefore what gaps need to be filled.

At the same time, he will need to look at each of the specific areas on which the judge will wish to make an order during the case management conference (CMC): see PD63 29.1 (CPR63.23)).
At the Case Management Conference 
At the CMC referred to in rule 63.23 the court may order any of the following –
(1) specific disclosure;
(2) a product or process description (or a supplementary product or process description where one has already been provided);
(3) experiments;
(4) witness statements;
(5) experts’ reports;
(6) cross examination at trial;
(7) written submissions or skeleton arguments.

and bear in mind PD63 29.2:

The court will make an order under paragraph 29.1 only –
(1) in relation to specific and identified issues; and
(2) if the court is satisfied that the benefit of the further material in terms of its value in resolving those issues appears likely to justify the cost of producing and dealing with it.

Consequently, part of the purpose of this review is not just to identify the general areas in which evidence is needed, but also to identify and set out the specific issues, and, if necessary, why the material is required and that producing it is proportionate to the issues in question.  In relation to expert evidence it will be important to identify specifically where the expert can assist the Court – the aim is to avoid long detailed expert reports and focus closely on the critical issues.

Other issues
In addition Cautious’ patent attorney will wish to review a number of other matters:

·         is there a possibility mediation might be appropriate (and advise Cautious on it, as the form of CMC order will likely recite that this has been done)?
·         review again what is the objective of bringing the proceedings?
·         should a settlement proposal be made, and can one be made which will put IPOff at risk in relation to costs under Part 36 or otherwise – discussed in a later page?
·         is the estimate of costs given to Cautious still accurate or should it be revised (incidentally something which should be kept under review all the time, not just in the run up to the CMC)?
·         whether the assessment of the merits of the claim has changed at all and any advice to Cautious on this?

An illustration of elements of the form of order which may be made is given in Dame Vivienne Westwood OBE V Anthony Edward Knight [2010] EWPCC 16 (incidentally due for hearing today, 8 March 2011)).

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