An International Guide to
Patent Case Management for Judges

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9.3 Judicial institutions

9.3.1 Judicial administration structure

Figure 9.2 shows the judicial administration structure in the United Kingdom.

Figure 9.2 The judicial administration structure in the United Kingdom
image The civil courts and judges of England and Wales

The jurisdiction of England and Wales has two first-instance civil courts: a set of local county courts, which are located in larger towns and cities throughout the jurisdiction, and a national High Court, with its principal seat in London and a series of district registries in major cities. Cases of high value and importance are heard in the High Court.

In all civil first-instance courts, trials are conducted by a single judge sitting alone. The judge is the tribunal of fact and law. Case management is also undertaken by a single judge. In some courts, trials are conducted by judges of a different grade from that of judges who hear trials; in other courts, the judges who hear trials also carry out case management. All patents cases are heard in courts of the latter sort.

Appeals go to the next court in the hierarchy. Appeals from the High Court are to the Court of Appeal, which sits as a panel of three judges. Appeals from the Court of Appeal are to the U.K. Supreme Court.

Judges are recruited from the ranks of qualified lawyers who have been in practice for a substantial time. When a lawyer is appointed as a full-time “salaried” judge, they leave their legal practice. It is also possible for a lawyer to act as a deputy judge as a part-time fee-paid appointment while continuing to work as a lawyer. Today deputy judge appointments are for a limited time so as to allow the lawyer to get a taste of work as a judge and decide if they wish to apply for a full-time post. Full-time judges are only appointed from the ranks of lawyers who have sat as deputies.

Judicial training is conducted at the Judicial College. The Patents Court

The Patents Court is part of the Chancery Division of the High Court and is now organized as part of the Business and Property Courts of England and Wales. It handles most of the patents cases that are brought in the United Kingdom. In England and Wales, it has exclusive jurisdiction over patents cases34 where the value is over GBP 500,000 and shares jurisdiction with IPEC in cases of a value between GBP 50,000 and GBP 500,000 (or more, if the parties agree).35

The principal judges of the Patents Court always have extensive experience in patent litigation. The principal judges of the Patents Court, Mr Justice Meade and Mr Justice Mellor, were each in practice at the patent bar for about 30 years before their appointment, handling cases relating to a wide range of technologies. They are supported by five to eight other judges of the Chancery Division who are able to hear patents cases, by the judge in charge of IPEC (currently His Honour Judge Hacon) and by a number of deputy High Court judges (experienced practicing barristers or solicitors who have been appointed to sit as part-time judges).36

The Patents Court operates a system in which the technical difficulty of the case is rated between one and five, with five representing the most technically complex cases. Only Mr Justice Meade, Mr Justice Mellor, His Honour Judge Hacon or suitably qualified deputy High Court judges are able to hear trials of cases with a technical complexity of four or five. Trials of cases of lower technical complexity and interim applications can be heard by any judge permitted to sit in the Patents Court.

Under Section 70(3) of the Senior Courts Act 1981, the Patents Court has the discretion to appoint scientific advisers. The role of a scientific adviser is to assist the court in understanding the technology and the technical evidence, not to assist the judge in deciding the case.37 In most cases, the judges of the Patents Court sit without a scientific adviser; it is rarely necessary given their background and the fact that they have the assistance of expert witnesses called by the parties. However, in some cases, scientific advisers have been appointed to assist the trial judge,38 the Court of Appeal and the Supreme Court (or its predecessor, the House of Lords).39

The English legal profession is divided into barristers and solicitors. Parties are generally represented before the Patents Court by specialist patent barristers instructed by specialist patent solicitors. There are about 119 members of the Intellectual Property Bar Association of England and Wales, many of whom practice extensively in the Patents Court. There are about 60 members of the Intellectual Property Lawyers’ Association, which principally represents solicitors practicing in intellectual property law in England and Wales; of these, a substantial number are experienced in patent litigation, and some have rights of audience before the Patents Court as solicitor advocates. Parties can also be represented by patent attorneys, either instructing barristers or exercising their own rights of audience.

An individual may also represent themselves as a “litigant in person”, and a company or other corporation may be represented by an employee, provided that the employee has been authorized by the company and the court gives permission.40

The Patents Court, like the rest of the High Court, operates according to the “overriding objective” of the CPR – namely, that of “enabling the court to deal with cases justly and at proportionate cost.”41 The CPR explains that

Dealing with a case justly and at proportionate cost includes, so far as practicable:

  1. (a) ensuring that the parties are on an equal footing and can participate fully in proceedings, and that parties and witnesses can give their best evidence;
  2. (b) saving expense;
  3. (c) dealing with the case in ways which are proportionate –

    1. (i) to the amount of money involved;
    2. (ii) to the importance of the case;
    3. (iii) to the complexity of the issues; and
    4. (iv) to the financial position of each party;
  4. (d) ensuring that it is dealt with expeditiously and fairly;
  5. (e) allotting to it an appropriate share of the court’s resources, while taking into account the need to allot resources to other cases; and
  6. (f) enforcing compliance with rules, practice directions and orders.42

This overriding objective has fueled many developments in case management in the Patents Court, and the High Court more generally, aimed at streamlining patent litigation while retaining the core features of the system that enable proper scrutiny of parties’ cases. We address these in more detail in subsequent parts of this chapter, but examples include:

  • providing the option for parties accused of infringement to provide a full and accurate product and process description of the alleged infringing product or process, rather than requiring the disclosure of documents;43
  • limiting the disclosure of internal documents that might be said to bear upon issues of obviousness or insufficiency to cases in which such disclosure is necessary to deal with the case justly and proportionately;44
  • introduction of a streamlined procedure (no disclosure or experiments, cross-examination on written evidence only on topics where it is necessary)45 and the Shorter Trials Scheme (trials to be concluded within four days, disclosure subject to restrictions, evidence and cross-examination restricted to identified issues);46 and
  • expedition of cases where merited,47 as well as a general intention to bring cases on for trial within 12 months where possible.48

Appeals from the Patents Court are not available as of right. A party wishing to appeal must seek and obtain permission to appeal, as discussed further in Section 9.8.1 below.

If permission is granted, appeals from decisions of the Patents Court will normally be heard by a panel of three judges of the Court of Appeal. The panel is likely to include at least one of the patent specialists in the Court of Appeal, currently Lords Justices Arnold and Birss, each of whom sat as a judge of the Patents Court for many years following lengthy periods of practice at the patent bar.

If permission to appeal to the Supreme Court is granted (discussed below in Section, then the case is likely to be heard by five Supreme Court justices, which is likely to include Lord Kitchin, who practiced at the patent bar before his appointment to the Patents Court, then the Court of Appeal and finally the Supreme Court.

In a case in which, while an appeal against the revocation of a patent is pending, the patent proprietor reaches a settlement with its opponent so that the appeal is unopposed, the appeal court will not simply allow the appeal. It will need to be persuaded that the decision to revoke the patent was wrong. In such cases, it is the practice to invite the Comptroller to make such submissions as they think fit to assist the court.49 The Intellectual Property Enterprise Court

Like the Patents Court, IPEC is part of the Business and Property Courts of the High Court of England and Wales. It (and its predecessor, the Patents County Court) was established to improve access to justice in patents cases for small and medium-sized enterprises by providing a forum with streamlined litigation in which a party’s potential liability for the costs of the other party is limited to GBP 60,000.50 The presiding judge of IPEC is His Honour Judge Hacon, who is a specialist circuit judge.51 His Honour Judge Hacon is assisted by a number of deputy judges (comprising nominated barristers and solicitors who specialize in intellectual property law). All judges who sit in the Patents Court can also sit in IPEC. IPEC is covered in greater detail in Section 9.9 of this chapter. Scotland

In Scotland, the Court of Session has exclusive jurisdiction in proceedings relating primarily to patents.52 Chapter 55 of the Act of Sederunt (Rules of the Court of Session 1994) 199453 contains specific rules governing the procedure for and case management of all intellectual property cases, including those involving patents.54 Patents cases are heard by designated intellectual property judges,55 who are frequently also judges in the Commercial Court. The court aims to ensure, as far as possible, that the same judge is responsible for the management of a case from commencement to conclusion.

Cases are put out at an early stage for a preliminary hearing.56 At this hearing, the intellectual property judge can make orders that are “fit for the speedy determination of the cause,” such as ordering the disclosure of witnesses or documents or the lodging of expert reports or affidavits.57 The intellectual property judges also have available to them extended powers that are peculiar to intellectual property cases, such as the power to order the disclosure of information relating to infringement of an intellectual property right.58

Thereafter, a case is usually set down for a procedural hearing.59 At this hearing, the judge will decide which issues are to be determined at the substantive hearing of the case, how they will be addressed and may order, for example, the lodging of witness statements, the lodging of documentary and other evidence, and the carrying out of experiments.60 The breadth of the orders and discretion available to the judges at each stage enables them to achieve both the specific procedure and the type of hearing that are best suited to the resolution of each individual case. Northern Ireland

In Northern Ireland, patents cases are brought before the Chancery Division of the High Court of Northern Ireland. They are case-managed in the same way as other chancery cases. Once pleadings are complete, the case is set down, and it then comes before the chancery judge for case management. Case management involves the legal representatives completing a questionnaire: this deals with interlocutory matters, experts’ reports and meetings, statements of law and fact, details of any alternative dispute resolution, and trial details (e.g., the number of witnesses, estimated length of trial, timetable for skeletons etc.). The judge then reviews the case with legal representatives present, and it is usually listed for hearing after two to three review hearings, depending on how matters progress. Patents cases in Northern Ireland are rare.

9.3.2 Relationship between invalidity and infringement proceedings

U.K. courts do not generally bifurcate the determination of the issues of patent infringement and validity; the issues are heard together. Consequently, a patentee cannot attempt to apply a different, narrower interpretation of the patent and its scope when the court is considering the issue of validity and an expansive interpretation when considering the issue of infringement. As it was once said by Lord Justice Jacob in the Court of Appeal:

Professor Mario Franzosi likens a patentee to an Angora cat. When validity is challenged, the patentee says his patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze.61

This also gives rise to so-called squeezes on the patentee, such as where the claimant contends that, if the claim is construed widely enough to cover the defendant’s product, then it is also wide enough to cover the prior art and so must, accordingly, be invalid. Alternatively, if it is construed narrowly enough to avoid the prior art, then it does not cover the defendant’s product, and so there can be no infringement.