Tuesday, 12 July 2011

PCC Page 33: Octopus dress and address

While the Patents County Court
is less formal than the High Court,
counsel should not be too casual ...
Eloquently explicated by the Chartered Institute of Patent Attorneys (CIPA), the PCC Pages seek 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 33rd, former CIPA President Alasdair Poore describes the Case Management Conference and some tricky little matters of etiquette, like what to wear and what to call the judge.
"Cautious’s patent attorney has been diligently pursuing his client's claim in the PCC against IPOff, whose Robot Octopus product clearly infringes Cautious's patent and unregistered design rights. He has at last got through the case management conference (CMC) – something of a hurdle on his first case in the PCC, or so he thought. He reports to his mentor on the directions the judge made for the defendants to amend their pleadings and follows up with a bit of a saga about the CMC itself:
Dear P., I have just got through my first trial -- the CMC. Actually it went pretty smoothly. As you know I had discussed the proposed directions with IPOff’s solicitor and, despite my first impressions from his condescending correspondence, actually he was pretty reasonable. Of course that does not make his client’s case any better – and it's important to keep the personalities separate from the merits. So we got a number of the directions agreed in advance, but that still left quite a lot for argument.

Some key points came out of it. As you know IPOff’s claim for threats was transferred from the Patents Court to the PCC, and that case has been consolidated so that it can be heard with Cautious’s claim. [If the claims were started separately, even if they relate to broadly the same subject matter, should they be consolidated, or should they be kept separate so that the costs cap applies to them independently? Thoughts please.] IPOff had set out their threats claim in a thoroughly unspecific way, and also not particularized the enormous amounts of damage arising from the threats. The judge ordered that they amend their existing particulars of claim to conform to the requirements in the PCC [CPR Pt 63.20 (2)]. In other words, he asked that they set out all facts matters and arguments in relation to the threats claims. [Judge Birss QC considered the question of amending the pleadings (as well as costs) when transferring a case from the High Court to the PCC in Dame Vivienne Westwood OBE v Anthony Edward Knight [2010] EWPCC 16 (the first of three Westwood v Knight PCC judgments). His conclusion was set out in paragraphs 19 to 27. The defendant (counterclaimant) had already set out extensive detail, including 46 pages of annexes; the claimant had also set out facts and arguments concisely so that there was no need to add to those, except for one point: to particularize details of the use of a further device, the “cherub with legs of a satyr” (para 21). The judge also permitted addition of references to the pre-action protocol, so that shorter time limits for the defence could be relied upon – not a requirement in this case (para 23)]. He also ordered that the claimant have the relevant people (who knew the facts) sign the statement of truth in relation to the claim. [The claimant in Westwood v Knight sought to add a statement of truth signed by the relevant representatives from the claimant so that the statement of case could stand as a witness statement. The judge agreed. (para 24 to 26)]. I am confident that, when we see that detail, it will be clear that they have absolutely no case on that.

The judge also order that further particulars be given of the allegations of independent creation of the Robot Octopus – which, as you know, IPOff assert they created independently. Clearly there was a lot missing here and I suspect that, when they try to set out all the facts and arguments, this claim will fall apart. [A party may seek to have part of a statement of case struck out on the grounds that amongst other things it does not comply with the Civil Procedure Rules CPR3.4(2)(c) (and therefore lead the other party to seek to amend) or further information (particulars) may be requested as provided in CPR18 and Practise Direction PD18, but usually a request should be made for the information in advance.]

Finally, the judge reserved the position in relation to costs in the High Court. [He did this in Westwood v Knight, saying that, despite it being desirable to have reasonable certainty on costs, not much had happened in that case in the High Court, and it was preferable to reserve costs (para 28)]

I will report on the expert witnesses separately.

Going back to the hearing itself, I had prepared bundles of documents, so far as they were needed in accordance with the PCC User’s Guide (see para 2.5 (page 13) and PD63 para 5.9 – Judge Birss reminds that ths should be read in the context of the PCC already having many of these documents) and the Chancery Guide (Appendix 6, page 164). I submitted skeleton arguments setting out my reasoning, much as we discussed and worked through together. I gather they are not always necessary but it seemed like a good idea to file them in this case. [See Vivienne Westwood, para 15: “In the Patents County Court parties' skeleton arguments at the interim stage need not be filed if they are not necessary. Nevertheless it is obvious that in some cases a skeleton argument on at least some issues will be needed at the CMC. The matter needs to be approached on a case by case basis”]

The most traumatic moment was actually the day before the CMC. I realized I had no idea what to call the judge, or whether I should wear a gown or something. Seems quite simple questions really, but quite nerve-racking. So I asked around the office. No-one there was sure. So I called the High Court: they said you should call him “Sir” and sounded astonished that I would not already know. Having heard some people say that he should be called “Your Honour”, and other saying barristers called judges in the County Court “Sir” I thought I should check on that trusty resource, the internet. There I was at least consoled that I was not alone in having problems with this question: “I'm a lawyer and appeared in front of them all at some point. I haven't always managed to get it right either.”

Eventually I called a patent agent friend who had actually appeared. He explained that a county court judge should be called “Your Honour”. I tried that out and it seemed to work just fine. I had also confirmed that for the CMC I was not expected to wear a gown, although I had brought the one from the CIPA offices just in case.

Actually the hearing was just fine. Not something to be nervous about in the future – or at least only as nervous as makes sure that you do the preparation properly.”
Westwood v Knight [2010] EWPCC 16 also contains examples of directions as does the PCC User’s Guide".

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