Wednesday, 10 August 2011

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. …”".

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