PCC Page 37: The Octopus – keeping documents up its sleeve

Cautious's list of desired documents--
does it match IPOff's deliverables?

Elegantly embroidered 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 37th, former CIPA President Alasdair Poore considers whether IPOff has complied with an order to give specific disclosure of certain documents relevant to this dispute ...

In the patent and design right infringement proceedings brought by Cautious against IPOff in the PCC, IPOff was ordered to give specific disclosure.  This was limited to documents relevant to IPOff’s allegation that they had independently developed the designs of the Robot Octopus (which, Cautious alleges, infringe Cautious’s unregistered design right).  The form of the order was the standard form of order, as provided in the PCC Guide (currently, as noted in last week’s PatLit Blog, bizarrely to be found under “Patents Court Guide” in the “Patents Court” page on the Justice web site):

The parties will make and serve on the other of them a list in accordance with form N265 of the documents in their control which relate to [issue X] by [date].

IPOff served the list of documents in accordance with the Order. IPOff’s solicitor also supplied copies of relevant documents with a covering letter saying that, in order to save time and effort, they had made copies of the documents as well as supplying the list in accordance with the Order.  Could Cautious's patent attorney please confirm that they would meet the costs of copying?

Cautious's patent attorney’s assistant has reviewed the documents and list.  His conclusion is that there is something fishy going on.  Cautious's patent attorney is more reserved about whether there is something fishy, but there do seem to be some problems.  He writes to IPOff’s solicitor:

“Dear xxx, thank you for your client’s list of documents and also for sending us copies of the relevant documents.  We will revert on the question of costs in due course.

In the meantime, we are concerned that there appear to be some significant gaps in the disclosure you have given.  For example, in relation to the creation of your client’s alleged independent design, you are relying on  it having been created by an independent design agency.  The disclosed documents include a note of a meeting between your client and the design agency, Fishy Designs.  The note refers to the “5^th draft of the drawings emailed to us earlier in the week”.  Clearly (a) there have been earlier drafts which have not been listed; (b) there also appears to have been email correspondence with Fishy Designs – you state that such email correspondence was in the possession of your client but is not any longer as it has now been deleted from the system; (c) there is no reference in the list to any instructions provided to the design agency; and (d) there is no reference to other documents created by the design agency.  We remind you of your duties in relation to proper disclosure as set out in the Practice Direction PD31A 4.4 “the legal representative must endeavour to ensure that the person making the disclosure statement … understands the duty of disclosure under Part 31”.  It is quite apparent from the extent of disclosure made that your client does not understand what these duties are or is deliberately concealing relevant documents.  Please can you make clear these duties and serve an amended list within 7 days including all the documents in your client’s control which relate to the allegation that the design made by your client was made independently. Please can you also emphasise the serious consequences which attach to making a false disclosure statement [The party making disclosure is required to include in it a ‘Disclosure Statement’.  The form of this is set out in the Annex to PD31A.]  In particular, please point out to your client that making a false disclosure statement is contempt of court and your client could be sent to prison for breach.  [See Civil Procedure Rules CPR 31.23 and PD31A 8.  A slight overstatement.  The failure is “without an honest belief in its truth”, but still a point to make to a client]  We also remind you of your duty to explain to your client that it should ensure that that it preserves all documents.  This is additionally made quite clear in PD31B 7, and please let us know specifically when these emails were deleted and how this came about. [PD31B relates to disclosure of Electronic Documents]…”

Some comments on the disclosure process: 

·         The rules on disclosure are set out in Part 31.  The general procedure for standard disclosure is set out in Part 31.10.  Although, in the PCC, disclosure is not “standard disclosure”, but specific disclosure limited to particular issues, it is as well to understand the overall procedure. 

·         Disclosure is carried out by preparing a list of documents (see PD31A 3).  It is easy for clients to become confused as to what disclosure is.  It is rather natural for them to understand that it is supplying copies of relevant documents – rather than preparing the list (see CPR 31.2).  It is possible (and may be convenient in simple cases) for parties to agree to disclose documents without making a list (CPR 31.10(8)(a)). 

·         The list of documents must (usually – see CPR 31.10(8)(b)) contain a disclosure statement (CPR 31.10(5) to (7))).  The content of disclosure statement is set out in PD31A 4.2, and the specific form is set out in PD31A Annex.  The standard form of disclosure list is set out in form N265, as noted above, and conveniently this includes the form of disclosure statement (which rather suggests that IPOff has been rather careless in signing it, given the current state of play). 

·         Obtaining copies, or seeing the documents, is called inspection. The right to inspection is set out in CPR 31.3, and the procedure for inspection in CPR 31.15.  In this case, as provided in the form of order in the PCC Guide (see Annex A to the Guide): “If any party wishes to inspect or have copies of such documents as are in another party's control it shall give notice in writing that it wishes to do so and such inspection shall be allowed at all reasonable times upon reasonable notice and any copies shall be provided within 14 days of the request, upon the undertaking of the party requesting the copies to pay the reasonable copying charges” (note that the wording of this is slightly different to CPR 31.15). 

·         It is always worth considering whether you want inspection, as opposed to just receiving copies.  In some cases seeing the actual document, especially if it has manuscript markings on it, may be important.  Could IPOff be trying to do something underhand here? 

·         As noted above, and is made clear in the disclosure statement, a party has a duty to make proper disclosure (see CPR 31.23), and its legal advisor has a duty to make clear the extent of the client’s obligations in making disclosure (PD31A 4.4).

Next week:  Turning the magnifying glass on the Octopus sleeve ...

Alternative dispute resolution: sending in the heavies

"My First Half Century in IP", posted yesterday by Brookes Batchellor's Nick Dougan, celebrates Roy Prentice's (first) 50 years in practice as a patent and trade mark attorney.  This article contains a couple of paragraphs that might interest or amuse anyone who is disenchanted with the traditional judicial means of resolving patent infringement disputes:

This diving suit also
provides some protection
against the "heavies" 

"Unusual methods of patent enforcement 

One of my clients was involved in the design and manufacture of diving suits and equipment. He devised a lifejacket for use by divers for which we got a patent. He then devised a modification without telling me and started selling the modification. One day, I got a frantic phone call from my client. Two heavies had arrived at his premises and told him that he was infringing a patent and that unless he stopped immediately they would “sort him out”. My client wanted to know what he should do. I told him that the usual method was for the patentee to inform an alleged infringer of the existence of the patent and give him time to consider his position and reply. My client said that he did not think that this would work in this case and that he was going to tell the heavies that he would stop immediately. However, he would like to know if I thought he infringed the patent. He was also going to look into the matter of police protection. I got hold of the patent specification and checked that the patent was in force and then advised my client that I did not think that there was any infringement. 

This happened while my secretary was on holiday and I had a temp. She took a keen interest in this case, which was unusual for a temp, and I asked her why. She said that she was a foster mother to the patentee’s child and that the patentee was currently serving a sentence for grievous bodily harm in Lewes Prison (left). It seemed that, in spite of being in prison, he was still able to pay renewal fees and enforce his patent! Of course, I had to dismiss the temp immediately in case she passed on confidential information to the patentee. My client took the better part of valour and in spite of the fact that he did not infringe, he stopped selling the offending product. Thus, the patentee’s methods were very effective but, of course, illegal. I do not suppose that bothers a violent criminal".

Two more new titles -- possibly for review

The publication of a couple more books has just been announced by Oxford University Press, but this blogger has yet to see either of them.  Details, from the OUP email circular, are cut-and-pasted below. If PatLit can get hold of review copies (as is quite likely), well-informed readers will be invited to apply to review them for the blog.  If you want to be kept in mind as a possible reviewer of these or other new titles, can you please let me know by email here.

Winning the Patent Damages Case A Litigator's Guide to Economic Models and Other Damage Strategies Richard F. Cauley Winning the Patent Damages Case serves as a guide to patent litigators and in-house counsel who are either considering an action for patent infringement or who are facing the spectre of a lengthy, expensive litigation. It offers readers an analytical framework for determining the likely damages award in a patent case, which is critical to the decision of whether to settle the case and for how much. It provides valuable information on how to structure the patent case from the outset and assists accused infringers in how to prepare a "shadow" damages case that may result in a much more reasonable damages award in the event of a loss. Finally, the book provides practical suggestions on how to select and work with a damages expert. The second edition discusses the Federal Circuit's decision in Lucent v. Gateway on the entire market rule and damages allocation, as well as subsequent decisions which have employed its reasoning.  Paperback | 186 pages £135.00 | 25 August 2011 | 978-0-19-976756-4

Patent Litigation in China Douglas Clark In Patent Litigation in China, Douglas Clark provides U.S. and other non-Chinese practitioners with an overview of the patent litigation system in China and with strategic commentary to ensure better decision-making by those responsible for bringing or defending patent actions in China. Paperback | 298 pages £135.00 | 25 August 2011 | 978-0-19-973025-4

Some summer reading

U.S. Patent Prosecutor's Desk Reference is a recent Oxford University Press publication, authored by Joshua P. Graham and Thomas G. Marlow. It's remarkable that the pair have found time to put this work together, given their day-jobs. Joshua P. Graham is Patent Counsel for Research In Motion, where he is a patent prosecutor and portfolio manager for the Advanced Technology group, and Thomas G. Marlow is Intellectual Property Counsel for Fairchild Semiconductor, where he manages product line and business unit patent strategy, enforcement, and procurement. Both have previous experience in private practice.

What can the reader expect to find in this book? The publishers explain:

"Patent prosecution is more than drafting patents -- it is also advocating positions. The challenge that each patent prosecutor be an effective draftsman and advocate is compounded by mounting pressure to procure high quality patents at minimum cost. There is a need for a quick reliable reference to assist prosecutors in creating, researching, and supporting patentability arguments.

In the U.S. Patent Prosecutor's Desk Reference, Joshua P. Graham and Thomas G. Marlow assist patent prosecutors in responding to Office Actions issued by the United States Patent and Trademark Office (USPTO) rejecting patent application claims. It provides a comprehensive and updated source of law, organized by sections corresponding to the types of rejections made by the USPTO. Each section of this reference work includes the basis for the rejection, responses to the rejection, and legal authority supporting the responses.

This desk reference cites five different authority sources: statutes that govern the granting of patents; the Manual of Patent Examining Procedure, Eighth Edition which dictates how examiners determine whether a patent application should be allowed; decisions by the Board of Patent Appeals and Interferences which is the administrative body of the U.S. Patent and Trademark Office that reviews decisions made by the examiners; the U.S. Court of Customs and Patent Appeals which was the body that reviewed decisions made by the Board of Patent Appeals and Interferences until the Federal Circuit came into existence in 1982; the U.S. Court of Appeals for the Federal Circuit which is now the body that reviews decisions made by the Board of Patent Appeals and Interferences. The U.S. Patent Prosecutor's Desk Reference provides a comprehensive and reliable guide for prosecutors who create, research, and support patentability arguments ...".

A cynic might take the view that the successful navigation of Office Actions is just a prelude to having one's careful handiwork at the prosecution stage unpicked by subsequent validity challenges before the courts, but without a patent in the first place one doesn't have the option of deciding whether to sue a third party or defend an invalidity claim. Anyway, this work lurks somewhere between a desk reference work and a narrative book: the format and structure are those of the former, but many of the items referenced in it are, if not totally un-put-downable, agreeably accessible and sometimes compelling to read.

Bibliographic data. Paperback, viii + 411 pages (the web page says 388), ISBN 978-0-19-974062-8.
UK price: £135. Web page here.

International Patent Law: Cooperation, Harmonization and an Institutional Analysis of WIPO and the WTO, by Alexander Stack (Gilbert’s LLP) is the sort of book that always cheers this blogger up: a small book on a big topic. Anything with the initials "WTO" on the front cover is likely to be pretty beefy, as other books published from the same stable have amply demonstrated in recent years. But this book has bitten off a manageable chunk. It's not quite 'boy meets girl', but 'WTO meets WIPO' has a romance all of its own, and this little book helps the reader to understand the curious dance between the often politically sensitive but economically clumsy WIPO with the economically driven WTO.  Above all, it is not an easy read. The author's depth of familiarity with a number of disciplines and the depth of his analysis of institutional behaviour make the text slow-going for those who are less well informed

According to the web blurb:

"When is international patent law cooperation and harmonization welfare-enhancing? [The moment this question is asked, the secret is out: this is not a how-to-do-it book for anyone wanting to file for international patent protection ...] What is the role of international institutions – WIPO and the WTO – in furthering such harmonization? This book explores these questions from a global welfarist, rationalist perspective. It grounds its analysis in innovation theory and a examination of patent law and prosecution, incorporating the uncertainty of patent law’s impact on welfare at a detailed level, dynamic changes, the skewed nature of patent value and the difficulty of textually capturing patent concepts. Using tools from new institutional economics, it explores future design implications for international institutions, analyzing grounds for international cooperation as collective action problems and applying historical, political and transaction cost analyses [Arguably this is the book's strongest selling point].

Academics, students and practitioners interested in international economic law, specifically in respect of patents, innovation and intellectual property, the TRIPs Agreement, the WTO and WIPO will find this book essential [reviewer's note: academic and students, yes, certainly-- but I'm not sure what sort of practitioner would find this book 'essential', and I'm not sure I've met one yet who would think it was]. It will also prove insightful for researchers whose primary background is in international relations or international political economy, but are seeking an introduction to the patent and intellectual property field [reviewer's note: this book does not serve as an introduction to patent law or to intellectual property law, but appears to assume that the reader is familiar with the field] ".

Bibliographic data. Published by Edward Elgar Publishing, 2011. Hardback, x + 208 pages. ISBN 978 1 84980 258 1. Price £6 (you can buy it online from the publisher for £58.50).  Web page here.

European Patent Law: Towards a Uniform Interpretation, by Stefan Luginbuehl (a lawyer with the European Patent Office, Germany), is another recent offering from Anglo-American publishing house Edward Elgar Publishing.

"In his detailed study, Stefan Luginbuehl critically examines the latest efforts to establish a common European and EU patent litigation system and suggests possible alternatives to such a system.

Due to the lack of a European patent court, both the EPO and national judges interpret European patents and European patent law. This results in diverging interpretation across Europe and costly litigation for patent holders. Stefan Luginbuehl’s proposals to promote the goal of a uniform interpretation of patent law and ease the difficulties are timely and highly insightful.

Dealing with important legal and political issues related to European patent litigation and the establishment of a common patent litigation system, this book will appeal to practitioners, patent litigators, patent attorneys and judges specialised in patent litigation. Academics teaching and learning IP (patent law), private international law, or international civil procedure, will find this study interesting as the book deals with important aspects of national and international patent litigation, as well as procedural and structural questions related to the establishment of a patent court for Europe".

This is a serious analysis of the legal issues, current to November 2010. The author has drawn on a vast array of sources, reflecting a variety of legal cultures and stakeholder perceptions. Above all, it pays attention to the issues involved in creating closer cooperation within Europe from the standpoint of an insider who is as much concerned with the reality of life within Europe's patent systems as with matters of grand principle.  This reviewer looks forward to the second edition ...

Bibliographic data.Published 2011. xxiii + 333 pages.Hardback. ISBN 978 1 84980 105 8. Price £79.95 (£71.96 from the publisher's website). Book's web page here.

Subtle changes to challenging design patents in China

From John Wu of Rouse China comes a note of subtle changes to the approach to challenging design patents in China...

According to the current Chinese patent law that took effect on 1 October 2009, in order to be patentable a design must comprise one or more distinctive features when compared with a combination of existing designs or features. Under the previous law, the features illustrated in one existing design could be referred to for testing the patentability of a new design, together with features which could be said to be commonplace. This is a subtle change in the law that can catch people out.

There are likely to be only limited cases in which a design may be challenged for patentability by combining the features present in more than one existing design, e.g. it may be said that the new design is a simple transformation of a prior design. To do this, a single closest prior design should be selected and compared with the new design, before another design is referred to in order to establish the “simple transformation”.

Unlike the old law, where it would have been possible to establish this transformation by simply arguing that certain features not found in the prior design are “ordinary features in the art”, it will now be necessary to go further. It is most probable under the new law that in an invalidation trial, a petitioner may need to find solid evidence to prove that certain features, found in the subject design but not illustrated in the closest prior design, are customary features and therefore not distinctive. If the petitioner wants to argue that the subject design is not distinct, it may be necessary under the new law to identify another prior design to illustrate those which he argues are customary features. Thus challenging patentability of Chinese design patents may require a bit more effort than previously.

Canada clarifies applicability of 'good faith' rule to granted patents

A note from Canadian IP law firm Dimock Stratton LLP draws the attention of readers to a recent decision of the Federal Court of Appeal in Corlac Inc. v Weatherford Canada Ltd (2011 FCA 228) which limits the effect of the Patent Act s.73(1)(a) upon the validity of granted patents.  By that provision:

An application for a patent in Canada shall be deemed to be abandoned if the applicant does not 

(a) reply in good faith to any requisition made by an examiner in connection with an examination, within six months after the requisition is made or within any shorter period established by the Commissioner; ...

The Court held that, once granted, patents are not vulnerable to attack under that section -- which deals with obligations of good faith in prosecuting patent applications.  The Court added that patents once granted and applications for patents are governed by different statutory provisions.

Wuthering Sites: a drama for users of the Patents Court

It's amazing what you
can find when you do
a little digging

"On Friday evening, it seemed that the Patents Court Guide had vanished from the court’s new website. But after some digging I found it. This is my story".  So begins Vicki Salmon's tale of woe, high drama, anguish and the expectation of eventual happiness. If this scenario is one which resonates with you, read on ...

"Web access to IP court guides and diaries

Web access for the English courts used to be located at www.hmcourts-service.gov.uk. In April 2011 it was moved to a new site which is part of the Ministry of Justice and is to be found within www.justice.gov.uk. However, the transition has not been completely smooth and navigating this new website to find the information which is required for IP litigation is not quite everything one might wish for. These issues have been taken up with the IP Court Users’ Committee and the Patents County Court Users’ Committee and I hope that some of these will be fixed in the near future. Until then the following may be of assistance.

The Justice website has an index set out along the top. Access to information on the courts can be sought under the “Organisations” tab: but the swifter access to the IP courts is through “Guidance”. From there click the “Courts and Tribunals” link and then select “Courts” from the blue menu on the left hand side, or go straight to “Courts” from the Guidance page ... or just click here.

The blue menu down the left hand side has entries for both the “Patents County Court” and the “Patents Court”. The information on the Patents County Court has been updated at least once, but manages to refer to both the current and previous PCC judges and to both its current and its previous location. The PCC is in St Dunstan’s House and the judge is Colin Birss QC. In any event, the information on this page should NOT be relied upon: it is not correct. Instead users should refer to the PCC Guide about where and how to start a claim and deal with listing. For example, this web page says to issue proceedings in the Central London County Court, but that function transferred to the Chancery Registry on 1 April 2011.  Also, the judge keeps his own diary and his clerk deals with listings.

The IP Court Guides

There is no link to the PCC Guide on the Patents County Court webpage. So where do you find it? Well it takes a bit of digging and is by no means intuitive.

You have to access the section for the Patents Court, rather than the section on the PCC. This page gives a one line introduction to the Patents Court and then some information about the Patents Court Guide. This text predates the production of the Patents County Court Guide. At the bottom of the page is a pdf labelled “Patents Court Guide”. Only it isn’t. This is the Patents County Court Guide (www.justice.gov.uk/downloads/guidance/courts-and-tribunals/courts/patents-court/patents-court-guide.pdf). Confused? Well, it seems that the administrators of the Justice website have not yet understood the differences between these Guides and that is probably understandable, given the overlap in their titles.

So what has happened to the Patents Court Guide – the one which says it covers both the Patents Court and the PCC? I could find no link to it on the Justice website. However, it is still available and we got there through a Google Search. The version last revised on 24 February 2010 can be found at www.justice.gov.uk/downloads/guidance/courts-and-tribunals/courts/patents-court/patents_court_guide.pdf). It says it also applies to the PCC, but that is no longer the case and I understand that the IP Court Users’ Committee is intending to update this Guide in the near future. In the meantime, I think this is the most up-to-date copy.

Users will notice that the URLs for these two Guides are virtually identical. The only difference is whether the words “patents”, “court” and “guide” are separated by hyphens or underscores.

The IP Court Diaries

Diaries for the IP Court and the PCC can also be found on the Justice website. Access is from “Court hearing lists” in the blue vertical left hand menu on the Court page, from “Patents Court Diary” in the blue vertical left hand menu on the Patents Court page, by selecting “Daily Listings” on the www.justice.gov.uk/guidance/ page etc.

On www.justice.gov.uk/guidance/courts-and-tribunals/courts/daily-court-hearings.htm, IP gets three listings in the blue menu down the left hand side – “Patents County Court”, “Patents County Court Daily List” and “Patents Court Diary”.

I am not sure why the first of these is there, as the page is blank. The PCC Daily List is, as one would expect, the list for the day (but it has not been updated since the end of July). The Patents Court Diary has four sections, but if you scroll through (e.g. Section 1) carefully, you will find that there are pages in there which are dedicated to the PCC diary as well as pages dedicated to the Patents Court diary".

Vicki Salmon (a UK & European Patent Attorney & Solicitor, IPasset) is also a great asset to the IP professions in the UK and Europe. Thanks, Vicki, for your hard work!


If you were wondering about the title, the meaning of "Wuthering" can be found here


Would any reader like to estimate how much professional time is wasted each year, how much frustration is experienced and how many mistakes are made simply because of the maze-like manner in which important information is concealed merely by the manner in which it is revealed?

PCC Page 36: A woeful description of an Octopus

Sparklingly specified 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 36th, former CIPA President Alasdair Poore warns that product description orders are nothing to trifle with.

"In the patent and design right infringement action brought by Cautious & Co against IPOff, IPOff has served a Product Description describing the alleged operation of its own Robot Octopus football results predictor – a description which it served in accordance with the Order made in the Case Management Conference (CMC).

A quick review reveals apparent deficiencies.  Cautious's patent attorney writes to Cautious:

“Dear Cautious, 

I have received the Product Description – a description of the Robot Octopus and how it works, from IPOff’s solicitor.  I have not been able to send this to you because, as you know it is subject to a confidentiality order restricting disclosure to us and our expert. [As discussed previously this is an option.  See for example the quote below from Pumphrey J in Taylor v Ishida]

It looks to me as though there are some problems with this.  This is not altogether surprising as I think that IPOff has been thoroughly underhand – their whole effort seems to be to try and get one over on you. I have no confidence that IPOff’s solicitor has the technical understanding to know what is going on.

There are a couple of areas I would like you to confirm to me before I write to IPOff’s solicitor, blasting them for doing such a poor job.  You mentioned that the dealer had shown you a special mode of operation which you had to access by inputting a “secret” code.  He described this as the professional mode – not supposed to be accessible to ordinary purchasers.  You say that in this mode it appeared that the Robot Octopus uses somewhat different algorithms.  Can you confirm this?  There is no mention of a second mode in the Product Description. 

Secondly, you provided me with some “results” based on a prescribed set of input data, and that these results had the tell-tale signs of your own processing steps. I am sure the product they describe would not get those results.  Can you let me have more detail so that I can pass it on to our expert?

I propose to write to IPOff’s solicitors saying this is not good enough, saying that (a) we must have a proper Product Description failing which we will seek full disclosure (although it will be more costly to review) [CPR 63.9 says that disclosure is modified as set out in PD63, and PD63 6.1 provides that standard disclosure is not required where there a product description is served.  PD63 27.2 disapplies PD63 5.10 to 9.1, including the provisions on disclosure to the PCC.  However, it is clear that the aim is the same, and that a similar principle will be applied], and (b) I will need to review this with you.”

And (draft) to IPOff’s solicitor:

“Dear …, I refer to the Product Description you have served in accordance with the CMC Order. 

This description appears to be totally inadequate.  As you are aware, the purpose of a Product Description is “to avoid, if possible, obliging the defendant to give extensive discovery much of which, experience has shown, is rarely if ever referred to. If this object is to be achieved, it is essential that parties and their advisers appreciate that the rule requires "full particulars of the product or process alleged to infringe" to be given. In this context, "full particulars" means particulars sufficient to enable all issues of infringement to be resolved. The description must be complete in all relevant areas. ” (Pumphrey J in Consafe Engineering (UK) Ltd and another v Emtunga UK Ltd and others [1998] All ER (D) 434. 

The Product Description you have provided is woefully inadequate.  For example, we know that the Robot Octopus has at least two modes of operation which use different processes.  There is no mention of this in your Product Description at all.  Since we expect that your client thought that ours was not aware of a second mode of operation, we can only assume that this was a deliberate deception on their part, and we will draw this to the attention of the Court.

In addition, it appears on the basis of my own review that a product operating in accordance with the Product Description you have served would not produce the same results as the Robot Octopus produces.

We would remind you that this is not just a matter for your client.  A product description is “used to avoid the obligation to give discovery (or disclosure) and the duty of the parties and their advisers in relation to them is the same as the duty in relation to disclosure” (Pumphrey J in a second case, Taylor v Ishida (Europe) Ltd and another [2000] FSR 224).  You have an obligation to ensure that your client understands clearly what the duties are in relation to provision of a product description, and it is clear that, if your client was aware of those duties, it could not have accidentally failed to provide an adequate description.

In addition, failure to provide an adequate description could well mean that “[a] substantial amount of time at trial [is] wasted because of the inadequacy of the product description” (Taylor v Ishida).  Should this be the case we will draw the Court’s attention to the position as evidence of your unreasonable behaviour, and seek any additional consequential costs [CPR63 26.2 permits recovery of costs where the behaviour of a party has been unreasonable, and CPR 45.43 states that those costs are additional to any limit on costs under CPR 45.42.  These are also separate (in principle) from additional costs arising from a party’s abuse of process (CPR 45.41(2)(a))].

We also note that the product description is full of emotive language explaining why the product is totally unlike the subject matter of the relevant claims.  We again draw your attention to Consafe: “A description of the product either in general terms or including tendentious assertions is not acceptable.”

Finally, we observe that, in the light of the problems we have already had with the Product Description and out concerns that your client may be seeking to conceal relevant features of its product, we must insist on the freedom to disclose this to our client, so that it is able to discuss the details with us.  We note that “The description itself has the same privileges as a discovery document in the hands of the opposing party: it may not be used for any purpose other than for the litigation in which it is tendered, and, if it contains confidential matters, its distribution can be limited and its publication can be further restrained even after its use at trial (Grapha Holding AG v Quebecor Printing (UK) plc [1996] FSR 711)”  (Taylor v Ishida). Accordingly your client does not need the additional protection conferred by preventing our client having access to it, and, in the light of your conduct, it is essential that our client have access to the description.

Please therefore provide us with an amended product description which provides particulars sufficient to enable all issues of infringement to be resolved in respect of all modes of operation, and does not contain any extraneous material such as tendentious or argumentative comment, and confirm that we are free to disclose this to our client.  If we do not receive this within [  ], we will make an application to the Court.  We reserve our client’s position in relation to requesting full disclosure relevant to the operation of the Robot Octopus, bearing in mind the inadequacies of the description to date. …”".

Patent litigation as a game: the case of Hungary

"Footnotes to the patent game: how does homo ludens enforce patent rights in Hungary?" is the challenging title of a quite provocative article by József Tálas (Sar & Partners) which will be published in a forthcoming issue of the Journal of Intellectual Property Law & Practice (JIPLP) and which has been available online to JIPLP subscribers since 29 July. According to its abstract,

"Legal context: Can we imagine the patent case as a game? As Johann Huizinga, the Dutch historian and cultural theorist writes, “The lawsuit can be regarded as a game of chance, a contest or a verbal battle.” According to Huizinga, science is actually a game itself, thus scientific recognition is nothing more than the solution of a task of in a game. In this context, a patent suit is nothing more than the playing of a game.

Key points and practical significance: In our view in an ideal world the enforcement of patent rights should be a game of chess, where all the information is available to both players and the rules are simple and unquestionable. All players accept, understand and interpret the rules the same way. The referee has no role to play. However presently the enforcement of patent rights in Europe feels like playing poker with a strong element of gambling. In the course of current judicial proceedings in Hungary, in many cases, the advocate may even perceive the gambling element in the game of the lawsuit as dominant".

Non-subscribers to JIPLP can access this article via the Advance Access link on the journal's website, on a pay-to-access basis.

Warsaw hosts Unified Patent Litigation System conference next month

"The Future Unified Patent Litigation System in the EU" is a one-day conference which is to be held in Warsaw within the framework of the Polish EU Presidency on 23 September 2011.  According to the conference website, the basics are as follows:

Objective
This conference organised in the framework of the Polish Presidency of the EU Council will provide a platform for discussion on the new draft agreement on a Unified Patent Court presented by the Hungarian Presidency on 14 June 2011. At the Competitiveness Council on 27 June 2011, 25 EU Member States agreed in principle to pursue the creation of a unitary patent protection system in the framework of enhanced cooperation. The Council agreed on a general approach for implementing enhanced cooperation in the creation of a unitary system and stressed the link between the creation of unitary patent protection and the creation of a unified patent litigation system. The draft agreement on a Unified Patent Court is key to the successful functioning of the new system.  

The objective of the conference is to analyse how issues raised by the Court of Justice of the European Union in its Opinion 1/09 on the previous version of the agreement regarding compatibility with EU law were addressed, as well as to promote an exchange of views between courts and practitioners on the functioning of the European Patent Court. 

Key topics
The one-day conference will consist of three panels, in which judges, legal practitioners, academic experts and users of the patent system will be invited to give their perspectives on the following issues:

• The draft agreement on the Unified Patent Court: Effectiveness and flexibility

• Overall architecture of the future Unified Patent Court

• Conformity of the new patent system with the EU Treaties

There will be time for discussion.

The event is organised by ERA, the Academy of European Law, and has an impressive cast of speakers -- including some seasoned patent judges. You can get all the details of the programme and registration here.

PCC Page 35: rowing against the tide of expert enthusiasm

Extravagantly elucidated 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 35th, former CIPA President Alasdair Poore continues with a warning about the deployment of expert witnesses who are too enthusiastically partisan.

"Cautious’s patent attorney has located an enthusiastic expert, who is willing to give evidence in the PCC and who is a;sp available at the right time.  The expert has already prepared an initial draft of his evidence and has sent it to Cautious's patent attorney.  He has added some comments in his covering letter:

“Thank you for instructing me on this matter.  I am really keen to support Cautious.  Although I do not know them personally, I have watched their progress and I think they are a fantastic company.  Looking at IPOff’s web site, they are not of the same calibre at all.  Their product just looks like a copy of Cautious's ideas, and they are just ripping Cautious off, and I have made that clear in my report.  As you know I have some of my own patents in this field – I don’t want to mention them because you said I was to be a non-inventive expert – and my view is that Cautious has really beaten the field here.

You referred me, in your instructions, to a couple of pieces of material from quite an old text book.  I thought it better not to mention them, or what you told me in my summary of instructions.  I think that the book is pretty old, and is a potential diversion – better not to give the other side something to get their teeth into.

I also did a little background work.  I did a retrospective analysis of football results using one of the algorithms mentioned in the patent.  Couldn’t seem to get it to work.  Won’t mention that either, but I would be interested to talk to Cautious to see if I have got something wrong.”

Last week (PCC34) set out some of the principles for instructing an expert.  The practice in intellectual property cases is littered with traps.  Mr Justice Arnold explains some of the problems well in Medimmune Limited v Novartis Pharmaceuticals UK Limited and Medical Research Council [2011] EWHC 1669 Pat Ct reported a month ago, starting at para 99.  At para 114 he says: “The law reports are littered with cases, including some patent cases, in which judges have criticised expert witnesses for failing to be objective or in other ways.”  Cautious's patent attorney needs to be careful not to head the same way.

Fortunately, some mending can be done to the approach taken by the expert.  First of all it is worth saying (again) that the Protocol for the Instruction of Experts to Give Evidence in Civil Claims, referred to last week, gives some excellent guidance on how to instruct an expert.  But reading a few cases gives more of a flavour of what can go wrong – especially as, as Arnold J says: “Expert witnesses in patent litigation stand in a rather unusual position” (para 109).  He explains:

“They are generally leading scientists or engineers in the field in question. Frequently they are academics. Sometimes they are consultants. In most cases, they will not have given expert evidence in patent litigation before, although there are exceptions to this. Not only that, but also they will generally have little experience of the patent system. Where do they have experience, it will generally be as inventors named on patents. As such, they may have had scientific input, but generally they will have learnt little about patent law in the process. In some fields, they may also be accustomed to using patents and patent applications as sources of technical information, but again without necessarily understanding much about patents themselves. When asked to prepare an expert report in a patent case, they will have to consider such questions as the identity and attributes of the person skilled in the art to whom the patent is addressed, the common general knowledge of the skilled person and whether something would or would not be obvious to that person in the light of particular prior art given the constraints imposed by the law of obviousness. Usually, this is not a task of which they will have any previous experience.”

He continues, explaining that the legal advisors will, almost inevitably, be heavily involved in preparing the expert report, and the report may even be drafted by the lawyer – looks like a departure from the injunction that a witness statement should be in the witnesses own words.  Of course that is precisely what the lawyer has to be careful to avoid:

“For these reasons expert witnesses in patent actions require a high level of instruction by the lawyers. Furthermore, even if they are experienced authors, they need considerable assistance from the lawyers in drafting their report. In practice, most expert reports in patent cases are drafted by the lawyers on the basis of what the expert has told them and the draft is then amended by the expert. This, of course, requires the lawyers to understand what the expert is saying. It follows that the drafting of an expert's report in a patent action involves a steep learning curve for both the expert and the lawyers. The lawyers are learning the technology and the expert is learning enough of the law to understand the questions he must address. It follows that a high degree of consultation between the expert and the lawyers is required. Frequently, the preparation of the report will involve an iterative process through a number of drafts.” (para 110).

It is the lawyer's job to make sure that an expert is not just told of his primary duty to the Court, and says that his report reflects that duty, but that the expert actually embodies that principle in the evidence given: 

“I wish to emphasise that the lawyers who instruct expert witnesses bear a heavy responsibility for ensuring that an expert witness is not put in a position where he can be made to appear to have failed in his duty to the court even though he conscientiously believes that he has complied with that duty.” (Arnold J, ibid, para 114).  

Indeed perhaps a failure to do that will not just undermine a case but (if it amounts to inappropriate pressure) amount to a contempt of court (see Glaxo Group Ltd’s Patent [2004] EWHC 477 (Ch)).

So what is wrong with Cautious's expert’s approach so far.  Some annotations may shed some light:

“Thank you for instructing me on this matter.  I am really keen to support Cautious. [CPR35.3 makes clear that the overriding duty of the expert is to help the Court, and this overrides any duty to the party paying their bill.  PD35 2.2 provides “Experts should assist the court by providing objective, unbiased opinions on matters within their expertise, and should not assume the role of an advocate.”  The expert’s comments savour of both losing objectivity and being an advocate for Cautious – both are wrong and likely to undermine the expert’s credibility] Although I do not know them personally, I have watched their progress and I think they are a fantastic company.  Looking at IPOff’s web site, they are not of the same calibre at all.  Their product just looks like a copy of Cautious ideas, and they are just ripping Cautious off, and I have made that clear in my report. [In addition to PD35 2.2 making clear that an expert should not be an advocate for the party paying his bills, para 4.4 of the Protocol makes clear that an expert should confine themselves to issues which are material to the dispute – and in any event the report should only cover those issues on which the expert has been permitted to give evidence: copying is not one of them] As you know I have some of my own patents in this field – I don’t want to mention them because you said I was to be a non-inventive expert – and my view is that Cautious has really beaten the field here. [The expert should mention all matters which are material to their evidence (As PD35 2.3 makes clear “Experts should consider all material facts, including those which might detract from their opinions.” Even though in this case it might not detract).  Their own contribution to patents in the field may well be relevant, and even if not identified as part of the instructions, should be considered as to whether they are material – see for example Medimmune, para 134]

You referred me, in your instructions, to a couple of pieces of material from quite an old text book.  I thought it better not to mention them, [One cannot emphasise PD35 2.2 enough: “Experts should consider all material facts, including those which might detract from their opinions.”] or what you told me in my summary of instructions. [Even more dangerous ground here.  CPR35.10(3) provides: “The expert’s report must state the substance of all material instructions, whether written or oral, on the basis of which the report was written”, and PD35 3.2 provides: “An expert's report must … contain a statement setting out the substance of all facts and instructions which are material to the opinions expressed in the report or upon which those opinions are based”.  This is reinforced by CPR 35.10(4) which follows: “The instructions referred to in paragraph (3) shall not be privileged against disclosure but the court will not, in relation to those instructions (a) order disclosure of any specific document; or (b) permit any questioning in court, other than by the party who instructed the expert, unless it is satisfied that there are reasonable grounds to consider the statement of instructions given under paragraph (3) to be inaccurate or incomplete.”  The failure to disclose material instructions would open up disclosure of all the instructions.  Not a happy thought, especially given this covering note – and particularly the following paragraph in the experts covering letter, for which Cautious will have to work on a solution!]  I think that the book is pretty old, and is a potential diversion – better not to give the other side something to get their teeth into.

I also did a little background work.  I did a retrospective analysis of football results using one of the algorithms mentioned in the patent.  Couldn’t seem to get it to work. [Oh, no …. !]  Won’t mention that either, but I would be interested to talk to cautious to see if I have got something wrong.”

The good news is that, although instructions to an expert are not privileged, draft reports by the expert are privileged (subject to CPR35.10(4) – see Jackson v Marley Davenport [2004] EWCA Civ 1225.  So Cautious's patent attorney has not lost all, but there is some work to be done here". 

Indian patent enforcement and the chemical arts

The Royal Society of Chemistry's Law Subject Group is holding a symposium, "Indian Patent Enforcement in the Chemical Arts", on Monday 26 September 2011 in the Common Room, The Law Society, 113 Chancery Lane, London WC2A 1PL, UK. The symposium will run from 9.30 am to 5.00 pm, with a reception from 5-6 pm. The symposium's synopsis runs thus:

"When the Indian government enacted the Patents (Amendment) Act 2005, it was guided by policy considerations that differed radically from its former IP policies. If the Patents (Amendment) Act 2005 is viewed as a grand IP experiment by the Indian government, the experience of India subsequent to 2005 may be viewed as the experimental result. 

The purpose of the symposium is to examine that experimental result from a case law point of view and its conformance with the intended policy. Particular emphasis will be placed on its impact on IP enforcement issues in the chemical arts".

Theres's a registration fee (£95 for RSC members, £115 for non-members). Click here for full programme, here for registration form.

Litigate patents in Northern Ireland? Yes, it can be done

This weblog is indebted to PLC for bringing its attention to a most unusual event: the litigation of a patent infringement claim before the High Court of Justice in Northern Ireland (Chancery Division).  The judgment of Mr Justice Deeny in this case, Siemens AG v Seagate Technology (Ireland) [2011] NICh 12, 14 June 2011, can be read in full here.

Why was the action brought in Northern Ireland? That province was the only part of the United Kingdom with which the alleged infringement had any connection since the defendant, Seagate, had a factory in Springtown, County Derry, which made semiconductor wafers for hard drives that were exported to the Far East for assembly. Northern Ireland does not have a specialist intellectual property court and, while, some local legal practitioners have acquired some experience of intellectual property dispute resolution, both parties were represented by barristers from England and Wales (the defendant's leading counsel was Colin Birss QC, now Judge Birss in the Patents County Court).

The judge acknowledged that he was new to the field. He also said, giving judgment about a year after the hearing ended:

"I regret that shortage of judicial manpower and the greatly increased workload in the Chancery Division have prevented a judgment until now".

For the record, the judge was of the opinion that the patent was obvious and that, in any event, it did not cover Seagate's product.