Wednesday, 7 December 2011

PCC Page 44: The Maze Before Trial

Thanks to the support of 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 44th, former CIPA President Alasdair Poore (ably aided by some outstanding proof-reading by Vicki Salmon) brings us further complications -- and a message of brotherly love for all small litigants:
"Readers will recollect that when the robot octopus became invisible – because Cautious's patent attorney was so working hard on the case for his client, the claimant – and we had got as far as a spat about disclosure and privilege.
 Cautious’s dispute centres on a claim that IPOff has infringed Cautious's patent and unregistered design right by making and supplying a robot octopus which could be used to predict football results.  At the Case Management Conference (CMC) there was an order for specific disclosure, limited expert evidence (on patent issues only) and exchange of witness statements.  In addition the Court ordered provision of a process description (to be limited by agreement at that stage to the expert), that Cautious can rely on the sample IPOff Robot Octopus, Cautious's original design of an octopus toy, and a sample of the current Cautious octopus.  
A useful sample of this sort of order can be seen in the Annex to the judgment on Ifejika v Ifejika [2011] EWPCC 28, previously mentioned here, which helpfully suggests how the issues may be identified as well as the elements for proof of the issues.  It's worth keeping at hand as a guide to preparing for a CMC. Readers will recollect previous reference to this case, and may also be interested in reading what is almost the conclusion to the sorry saga, reported on 23 November 2011, at [2011] EWPCC 31.  In that judgment, Judge Birss QC ordered that the damages in respect of one of the infringements be assessed at £10 (para 191), although the other was to be referred to an inquiry (para 192).  He concluded with the observation: 
I cannot end without expressing the hope that the parties now take the time and effort to settle what remains of this bitter dispute once and for all. In the biblical story of Esau and Jacob, Jacob steals his brother's birthright. It leads to a bitter dispute which lasts for many years but even then the brothers are finally reconciled (Genesis 33:1-20). Victor and Charles Ifejika should now strive to do the same.”  
This is an opportune moment to mention the upcoming small claims jurisdiction of the PCC again: I have been told that small claims cases will come before district judges and recorders, rather than before Judge Birss QC.
Cautious would not be caught in a case which progressed in such a manner (described by Judge Birss as “a fraternal dispute ranging over many years”).  However, as preparations are clearly underway, Cautious’s patent attorney expects some more turbulence in the proceedings; and has received just the sort of letter that he knew would start arriving as detailed preparations were being made.  
IPOff’s solicitor has been doing a little bit more homework, and has realized that the independent design argument was not going very far on the material his client had provided.  Now IPOff has dug up some “prior art” in the form of pictures in a text book on octopuses.  I can now reveal that the design of the octopus is indeed based on the rare “tiger octopus” – characteristics of which will be revealed in due course.  This text book details key features of the tiger octopus and IPOff’s solicitor has provided some photographs from the book, as well as live photographs of tiger octopuses.  Cautious's patent attorney suspects that these were taken on his holiday last Christmas and is not at all clear why it should have taken so long for these to have emerged into the proceedings.  
IPOff has asked that Cautious consent to amendment of the statements of case to reflect this new angle that he has discovered, saying that it is really necessary to involve an expert now in order to explain why this is material which would, at the relevant time, have been known to interested circles and why Cautious's designs do not create a different overall impression from these pictures. 
At the same time, Cautious’s expert has been doing his work.  He has now spoken to Cautious’s patent attorney to explain some problems.  As instructed he has not prepared a report on this aspect at this stage. He has been provided with the process description and the source code of the IPOff Robot Octopus engine.  This is confidential and was not provided to Cautious’s patent attorney, by agreement at the CMC.  On reviewing this and comparing it with the operation of the robot octopus, he finds that the robot octopus does not operate as he would expect, based on these descriptions.  The descriptions would indeed mean that the robot octopus was not infringing, but they do not, in his view, correspond with reality. 
Cautious's patent attorney is considering what steps should be taken, and also whether this is deliberate or accidental.  In order to demonstrate the position, Cautious may have to carry out experiments nothing in the CMC order about that, and it looks as though it could start racking up the costs.  
Cautious’s patent attorney is pondering each of these issues, and will be reporting on them shortly. 
In the meantime, he has also heard sad news.  The excitement of a proposed European Unified Patent Court is overshadowed by the fact that this may make the PCC irrelevant in patent cases.  The CIPA Briefing paper is here.  Readers should know that it is proposed that the Court will have exclusive jurisdiction not only in relation to the proposed European Unitary Patent but also, after a transitional period of only five years, in relation to patents granted under the existing EPC.  This appears to mean that all this effort Cautious’s patent attorney has gone to, to learn about the PCC and to persuade SME clients that the PCC will transform the value of their patents, will go to waste.  This is something which is made all the more frustrating by the complete absence of public information on the debates over the subject (see IPKat, Further work is still needed)".

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