9.6 Judicial patents proceedings and case management
Parties’ conduct before a patent action has begun is governed by the CPR. There is no specific pre-action protocol for litigation in the Patents Court, although the “Pre-Action Conduct and Protocols” practice direction applies.97 Paragraph 6 of this practice direction requires a claimant to write a “letter before action” to the defendant with concise details of the claim, including the nature of the acts complained of and the relief they seek. The defendant should be given a reasonable period of time to respond, typically 14 days but sometimes longer, before the claimant commences proceedings. This is so that the defendant has an opportunity to decide whether or not to contest the claim and also to enable both parties to explore whether or not settlement of the dispute is possible before proceedings are commenced.
If the claimant fails to send a letter before action in this way, it is open to the court to regard their conduct as unreasonable and to make an adverse costs award against them, especially if the defendant, when served with proceedings, indicates that they will in fact not contest them.
However, the court will take into account that, in some circumstances, it is undesirable for the claimant to give the defendant notice of proceedings. This is particularly the case where there is a race to the court between the two parties in the United Kingdom and another in another country in order for the relevant court to be first seized of jurisdiction.
Owing to the actionable threats provisions in the Act, as set out in Section 9.5.5 above, care must be taken in writing a letter before action to anyone other than the manufacturer or importer of a product or user of a process.
Before an action is started, the court can order that a party to a dispute gives disclosure of a specific class of documents in their power or possession. This will typically happen where the disclosure is either likely to promote settlement of the dispute, where it is likely to resolve the dispute or where it will result in the saving of costs.98 For example, where a patentee has granted a number of licenses under their patent, and the prospective defendant has indicated a willingness to take a license under the patent on similar terms to those already granted by the patentee, the patentee could be ordered to give disclosure of those licenses so that the defendant can see what might be similar terms of a license that they can agree to.
9.6.2 Venue, jurisdiction and case assignment rules
188.8.131.52 Jurisdiction, standing and service
All of the courts in England and Wales that handle patent litigation have jurisdiction over anyone carrying out one or more infringing acts occurring in their countries and can grant remedies covering the whole of the United Kingdom. They also have jurisdiction over anyone who is assisting the infringer to carry out infringing acts in that country, such as a parent company that runs a website directed to the United Kingdom. However, the courts no longer have jurisdiction over infringements of the equivalent European patent occurring in other European countries since the United Kingdom is no longer a party to the Convention on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters (Lugano Convention) or other similar treaty for the mutual recognition and enforcement of judgments in Europe.
The patentee and the exclusive licensee have standing to bring proceedings for infringement of a patent in the United Kingdom.99 If the defendant is domiciled outside the jurisdiction, the claimant will have to seek permission from the court to serve the proceedings out of the jurisdiction (on the basis of infringing acts in the jurisdiction) and serve in accordance with the rules of the Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters (HCCH Service Convention).100
Anyone has standing to bring proceedings for revocation of a patent and can serve such proceedings in the United Kingdom on the address for service registered against the patent at the UKIPO. Where the patentee is domiciled outside the United Kingdom, this makes service swift and straightforward and requires no translations or other Hague Convention requirements.
A claimant must bring all related claims in one set of proceedings in the United Kingdom. So, for example, if the patentee considers that a product infringes several of its patents, and if it starts proceedings for patent infringement, it must assert all of the patents it believes are infringed. The court will not permit the patentee to bring separate new proceedings later based on another of the patents in its portfolio that it alleges is infringed by the same product unless, for example, the facts giving rise to that infringement only came to light later. Bringing patents proceedings piecemeal in this fashion can be regarded by the court as an abuse of process.
A claimant must choose whether to issue their claim in the Patents Court or IPEC; see Section 184.108.40.206 below.
220.127.116.11 Court fees
To start proceedings, the claimant must pay the court an issue fee. The fee for cases with a value over GBP 200,000 is GBP 10,000. For lower-value cases, the fee is lower: five percent of the value of the claim for cases between GBP 10,000 and GBP 200,000 in value. For the very lowest value cases (under GBP 300), the issue fee is GBP 35. Individuals without the means to pay the issue fee can obtain a fee exemption known as “help with fees.”
There are only two other fees that usually need to be paid in a patents case at first instance. There is a GBP 255 fee for applications to the court, and a trial fee of GBP 1,090 is due when the date for trial is fixed. The court fees paid by a party are recoverable as part of that party’s costs (see Section 9.7.4 below).
9.6.3 Statements of case
18.104.22.168 Formal pleadings
Proceedings are commenced by the issue of a claim form with the court.101 The claim form is a short document, no more than around three pages in length, in a format specified by the rules of procedure of the court. It sets out the identities of the claimant and defendant and the relief sought by the claimant. The claim form is issued by electronically filing it with the court.
The claimant must serve the claim form on the defendant within four months of it being issued if the defendant is within the jurisdiction, or within six months if the defendant is outside the jurisdiction.102 Either at the same time as serving the claim form or within 14 days of its service, the claimant must also serve on the defendant the particulars of claim.103 It is best practice for a claimant to serve their particulars of claim with the claim form. The particulars of claim are typically relatively short and give brief details of the parties in the proceedings, the patent in issue, the relief sought and why that relief is justified.
If the claimant is the patentee alleging infringement of its patent(s), the particulars of claim will be accompanied by a particulars of infringement, which sets out the specific acts of infringement complained of and at least one specific example of an infringing act, including when and where it occurred.104 If the claimant is a party seeking to revoke a patent, the particulars of claim will be accompanied by a grounds of invalidity, which specifies and particularizes the grounds on which the validity of the patent(s) is challenged.105
For a lack of novelty or lack of inventive step plea (or both), the grounds of invalidity must identify the item(s) of prior art relied upon, and a copy of each prior art document, with an English translation if necessary, must accompany it.106 No further details need to be provided as to the basis upon which a patent is said to be anticipated or obvious over that item of prior art. Normally, it is advisable to limit the number of items of prior art relied upon to no more than three or four per patent. If a prior use is alleged, details must be given, including the name of the persons making such use, where and when it took place, and how it was made available to the public.107
More detail is generally required for pleas of added matter and insufficiency. An added matter plea should set out the details of the attack being made, with reference to what is said to be disclosed in the patent but not in the application as filed. An insufficiency plea should set out details as to the basis upon which it is said that the patent specification is insufficient, particularly which examples of the invention cannot be made to work and in which respects they do not work or do not work as described in the specification.108
Following service of the particulars of claim, the defendant has 14 days within which to file a defense to the claim or to file an acknowledgment of service indicating if it challenges the jurisdiction of the court and if it intends to contest the claim.109 If an acknowledgment of service is filed, the defendant is given additional time to serve a defense to the claim and must so do within 42 days of service of the particulars of claim.110
In its defense, the defendant will indicate which aspects of the particulars of claim (and, in the particular case, the particulars of infringement or the grounds of invalidity) the defendant admits, denies or requires the claimant to prove. The defendant may also include a counterclaim in its defense. This should follow on from the defense in the same document and should be headed “counterclaim.”111 The defense (and counterclaim) must be served on every other party.112 In the case of an allegation of infringement, the counterclaim will almost always comprise a challenge to the patent’s validity (and therefore be accompanied by the grounds of invalidity, as discussed above).
Where the defendant has included a counterclaim in their defense, the claimant must serve a reply and defense to counterclaim within 14 days of service of the defense and counterclaim. The defense to counterclaim should follow on from the reply in the same document and should be headed “defense to counterclaim.”113 The defense to counterclaim component will indicate which aspects of the counterclaim the claimant admits, denies or requires the defendant to prove. The reply component will additionally provide the claimant an opportunity to respond to any points made in the defendant’s defense to the claimant’s claim.
The defendant will then, should they wish, have the opportunity to file a reply to defense to counterclaim, which will provide the defendant an opportunity to respond to any points made in the claimant’s defense to counterclaim.
22.214.171.124 Requests for further information
Where either party considers that they need additional information or details about one or more aspects of the other party’s case, or require clarification of any matter in dispute in the case, they can serve on the opposing party a request for further information (sometimes called a “Part 18 Request”).114 Such requests should be strictly confined to matters that are reasonably necessary and proportionate to enable a party to prepare their own case or to understand the case they have to meet.115 A request for further information should set out – concisely and in the manner specified in Practice Direction 18 of the CPR – the further information, detail or clarification requested, often by reference to paragraphs of a party’s statement of case.116
The receiving party will typically then respond to that request in the manner specified in the practice direction. However, the receiving party may refuse to respond, for example, on the basis that the information is not necessary or proportionate. If no response is received, the requesting party may seek an order from the court requiring a response by a certain date.
126.96.36.199 Further statements of case
Besides the statements of case (including requests for further information and their responses) referred to above, there can be certain other formal pleadings ordered by the court at the discretion of the court, often at the request of the parties. Examples include statements of case on discrete aspects of a party’s pleaded case, such as a statement of case on infringement by equivalents, a statement of case on priority, a statement of case on plausibility or a statement of case on essentiality or nonessentiality.
9.6.4 Early case management
188.8.131.52 Case management conference
Following service of the defense (with or without a counterclaim), the claimant can make an application to the court for a case management conference (CMC). This is a hearing wherein the timetable (i.e., directions) to trial is ordered by the court if the parties cannot agree to a timetable in advance. This timetable will deal with matters such as the following:
- time for service of any further statements of case, or an order that a party respond to a request for further information;
- time for service of any notices to admit facts, which are documents requiring a party to admit facts or admit a part of the opposing party’s case. For example, the patentee might seek admissions as to whether the allegedly infringing product contains each element of the claim of the patent asserted. Suitable admissions will allow both parties to understand which elements of the claim are uncontested and which will be subject to argument at trial;
- time for the patentee to identify which of the claims of the patent it will rely upon at trial as being independently valid. This allows the court to focus only on a handful of claims at trial;
- a timetable for disclosure or time for service (or both), by the allegedly infringing party, of a product and process description (discussed in more detail below in Section 184.108.40.206);
- where a party wishes to establish any fact by experiment(s), the time for service of any notice of experiments setting out particulars of the experiments proposed to establish which facts;
- whether the parties have permission to call expert evidence and, if so, how many experts and in which field(s);
- whether a scientific adviser is to be appointed;
- timetable for the production of a technical primer or statement of agreed common general knowledge by the parties (discussed in more detail below in Section 9.6.9);
- time for the exchange of written fact evidence and expert evidence (both the first round of evidence (evidence in chief) and evidence in reply);
- the estimated length of the trial and the window within which it is to be listed; and
- the category of Patents Court judge required to hear the trial.
A typical order for directions made at a patents CMC can be found appended to the Patents Court Guide.117
It is often possible for the parties to agree the order for directions and ask the court to approve it on paper without a hearing. Even if this is not possible, in most cases, a large amount of the order can be agreed between the parties, and any outstanding issues are dealt with at the CMC hearing.
220.127.116.11 Time to trial and expedition
The stated ambition of the Patents Court in England and Wales is that the trial of a patent infringement claim should occur within 12 months of commencement of proceedings. In practice, the court issues a judgment at first instance within 12 to 15 months.
However, where necessary, the court can bring the issue to trial more quickly. For this to happen, one of the parties must seek an order that the proceedings be expedited. The most common situation in which this occurs is where the patentee seeks an interim injunction or, alternatively, an order for expedition on the basis that they will suffer irreparable harm if the infringement continues for 12 or more months before judgment at first instance. A straightforward way to resolve or at least mitigate the harm suffered by either party as a result of granting or not granting an interim injunction is to make the time to judgment as short as practicable. With an order for expedition, it can be the case that a trial will occur in as little as three months after the proceedings are started. This, of course, is incredibly quick and involves significantly shortening the normal timetable to trial and either partially or wholly removing certain steps in the proceedings with the permission of the court.
9.6.5 Interim orders and directions
18.104.22.168 Interim applications
In the run-up to trial, there can be various interim applications made by the parties. Some such applications are case management hearings, or akin to case management hearings, and involve sorting out aspects of the management of proceedings and the directions to trial that the parties cannot agree on between themselves. Other such applications, of which there are many, arise where a party seeks, for example:
- to strike out a particular part of the opposing party’s case on the basis that it cannot succeed on its face in any event (the wording of the CPR being that it discloses no reasonable grounds for bringing or defending the claim);118
- summary judgment on the basis that the opposing party has no real prospect of succeeding on the claim (claimant) or successfully defending the claim (defendant);119
- interim injunctive relief;
- security for costs (discussed further below in Section 22.214.171.124.2);
- for a preliminary point to be decided that will either dispose of the claim or make the proceedings significantly shorter and more efficient;
- an order requiring the defendant to disclose a specific category of documents;
- an order requiring the defendant to provide samples of an allegedly infringing product;
- an order freezing the defendant’s assets (in a case where there is evidence that persuades the court that it is likely that they will be dissipated);
- an order requiring the defendant to allow the claimant’s representatives access to property for the purpose of searching for and seizing specified items or documents – an Anton Piller order – (in a case where there is evidence that persuades the court that otherwise the defendant will be likely to hide or destroy those materials).
The most common and often commercially significant interim relief sought in patent proceedings is an interim injunction (sometimes called a preliminary injunction).
The principles governing applications for interim injunctions derive from the case of American Cyanamid Co. v. Ethicon Ltd  AC 396 and are, in summary, whether there is a serious question to be tried, whether damages are an adequate remedy (first to the claimant if relief is refused, and then to the defendant if relief is granted), whether either party would suffer irreparable and/or unquantifiable harm should the injunction be or not be granted and whether there are any special factors specific to the particular case in favour one way or the other.
In patents cases, it is often the case that the patentee can be compensated in damages for any infringement that occurs up until trial and therefore, an interim injunction is not normally granted (nor indeed applied for). The most common exception to this is where generic pharmaceutical products are or are at risk of coming onto the market, which will result in rapid price depression such that the patentee will never be able to recover its original price levels for the patented reference product if it is successful at trial. Even then, the court must be satisfied that the facts of the case, as borne out in the evidence, establish that damages are not an adequate remedy for the patentee.120
The party in whose favor an interim injunction is granted pending trial will typically be required to provide a cross undertaking in damages to the court to the effect that, if it turns out the injunction is wrongly granted (in the sense that that party is unsuccessful at trial), then they will compensate the allegedly infringing party in damages for loss suffered by reason of the injunction.
126.96.36.199 Dividing a large case into multiple trials
If a dispute involves a number of patents, the court may divide the case into a series of distinct trials so that the liability issues relating to one patent (or a related family of patents) are addressed at one trial, and then one or more further separate trials are scheduled to deal with further patents. In telecommunications and FRAND (fair, reasonable and nondiscriminatory) license cases, the court may also schedule a distinct FRAND trial to take place, commonly after one or more of the earlier trials. In this case, those earlier trials are called “technical trials” because they deal with the technology issues relating to the patent, as opposed to the FRAND trial, which deals with licensing and potentially with competition issues.
188.8.131.52 Issues relating to costs
As discussed further below in Section 9.7.4, costs are generally awarded in patents cases against the losing party. Costs cover legal expenses incurred by the party, which include the fees charged by the legal representatives, those by experts and any court fees. As such, costs are an integral part of court procedure and are a weapon in the court’s armory that it can use both to encourage parties to behave reasonably and effectively, to encourage settlement out of court, and not to waste the court’s time and resources.
184.108.40.206.1 Costs budgeting
If, on the claim form, the claimant does not declare that their claim is worth more than GBP 10 million, then the parties both have to perform a costs budgeting exercise, governed by Part 3 of the CPR.121 Claims declared to be worth more than GBP 10 million, as many patents cases are, are exempt.122
Costs budgeting requires the parties to fill out a form known as “Precedent H,” in which they set out how much they consider each stage of the proceedings will cost by reference to the hourly rates and time to be spent by the various members of the legal (solicitor or patent attorney) team, the costs of barristers instructed, the costs of experts to be instructed and other allowable disbursements. These Precedent H budgets then must either be agreed upon between the parties or approved at a hearing before the court. For each individual stage of the proceedings, the sum specified in the Precedent H for that party is the maximum level of costs recoverable from the other side by the winning party. Once agreed upon or approved, the Precedent H form can only be amended by application to the court on the basis of a significant change in circumstances.
220.127.116.11.2 Security for costs
If the claimant is impecunious or does not have any significant assets in the United Kingdom, the defendant can seek security for costs – namely, an order requiring that the claimant pay a sum upfront as security for the defendant’s litigation costs.123 Such security can be given either by payment of the full sum of security into court, or by banker’s bond or banker’s guarantee. If the parties cannot agree that security for costs should be given by the claimant or agree upon the amount of security that should be provided, the defendant can make an application to the court for a determination. When making such an application, the defendant will often rely on its Precedent H as setting out its anticipated costs of the proceedings.
18.104.22.168.3 Costs for interim hearings
For interim hearings, especially for those of half a day or less, the court will make a summary assessment of the costs to be paid for that hearing by the party who lost the application. This summary assessment is made based on a schedule of costs for that hearing produced by the relevant party that summarizes the costs expended on the application and on the hearing itself. The court will make the summary assessment immediately after the court has told the parties of its decision.
Except in exceptional circumstances, each party bears its own costs of a case management hearing.
9.6.6 Amendment of the patent
During the course of patent infringement proceedings, it is possible for the patentee to make an application to amend the patent and, in particular, the claims of the patent, pursuant to Section 75 of the Act. To do so, the patentee must serve on the opposing party and the UKIPO an application to amend the patent, identifying the amendments it is seeking to make and the reasons for making the amendment (e.g., so as to avoid a specific passage in an item of prior art). The UKIPO will advertise the application to amend the patent so that third parties have the opportunity to intervene if they object to the amendment being made.
Amendment applications are almost always heard at the trial. However, where such an application is made close to the time of the trial, there may be ancillary consequences, not least because the court’s power under Section 75 of the Act is discretionary:
(1) In any proceedings before the court or the comptroller in which the validity of a patent may be put in issue the court or, as the case may be, the comptroller may, subject to section 76 below, allow the proprietor of the patent to amend the specification of the patent in such manner, and subject to such terms as to advertising the proposed amendment and as to costs, expenses or otherwise, as the court or comptroller thinks fit. (emphasis added)
Any delay in making an application to amend the patent claims may affect the chances of the court allowing the application. In particular, the court will consider whether the application is procedurally fair to the other party. If the application is likely to necessitate another trial, this may result in it being refused. For example, in Nokia GmbH v. IPCom GmbH,124 the Court of Appeal confirmed the principles of patent claim amendment and duly rejected IPCom’s amendment application brought three days before trial on the grounds of procedural unfairness:
The main purpose of Art. 138 [of EPC 2000] as compared with the unamended Art. 138 was to provide that national authorities should have an amendment procedure at all. For prior to the amendment of the Treaty the laws of some countries did not allow patent amendment post-grant at all. Now they must. Art.138 was not intended to govern national rules of procedure concerning patent amendment, still less to require national courts to conduct them in a manner which national law regarded as an abuse of process.125
Indeed, late-filed amendment applications may be considered to be an abuse of the court’s process. This is particularly the case when the application is made after the trial has taken place.126
In practical terms, this means that a patentee that wishes to make an amendment application should make that application as soon as practicable. To wait until the judgment is available will almost certainly be too late. Occasionally, a provision will be made in the order for directions at the CMC for the patentee to make any application to amend the patent-in-suit by a certain date.
In most patents proceedings, the discovery available – referred to as “disclosure” in the United Kingdom – is fairly limited.
22.214.171.124 Product and process descriptions
In place of disclosure on the issue of infringement, a defendant can and – particularly to avoid the costs and burden associated with documentary disclosure – often will opt to provide a product and process description. A product and process description is a detailed document describing the product or process alleged to be an infringement by reference to the disclosure of the patent and, in particular, the claims of the patent that the product or process is said to infringe.
126.96.36.199 Disclosure on validity
In many patents cases, provision is not made for disclosure on any question of patent validity. However, an alleged infringer may seek disclosure from the patentee in relation to, for example, insufficiency or obviousness, such as where the patentee seeks to run a case of commercial success to defeat a case of lack of inventive step.
When disclosure is sought on a question of validity, only documents relevant to a pleaded ground of invalidity that a party has in its power or possession and that came into existence no more than two years before or after the earliest claimed priority date of the patent are to be disclosed, unless the court orders otherwise. If, for some reason, one of the parties has a good reason to advance that there are relevant documents that they should see outside this narrow time window, then they will need to make an application for specific disclosure to the court and satisfy the court that there are very likely such relevant and important documents in the possession of the opposing party that will help to progress the case.
Disclosure in the Business and Property Courts is governed by the procedure under Practice Direction 57AD of the CPR.127 This scheme requires parties to discuss and jointly complete a document known as a “disclosure review document,” which identifies the issues in dispute on which disclosure should be given, which level of disclosure is sought (by reference to the five models discussed below), what documents are likely to exist, and the individuals in the relevant organizations who are likely to be custodians of those documents. Keywords should also be provided in most instances to enable electronic disclosure (i.e., keyword searches).
The five models of disclosure are as follows:
- Model A – disclosure confined to known adverse documents;
- Model B – limited disclosure;
- Model C – request-led search-based disclosure;
- Model D – narrow search-based disclosure; and
- Model E – wide search-based disclosure (said to be exceptional).
If a party seeks Model C disclosure, it must set out in the disclosure review document its detailed requests for particular documents or narrow classes of documents sought in relation to the issue for disclosure. There is no presumption that any party is entitled to disclosure. The party seeking disclosure must justify to the court that the model sought is appropriate, reasonable and proportionate.
In practice, the disclosure review document is rarely agreed upon between the parties and can be the subject of significant argument at a hearing, often the CMC. The court will then make an order reflecting its determination of the issues. Even where the parties agree upon the contents of the disclosure review document, the court will still be required to approve it and make the order it sees fit.
188.8.131.52 Evidence of fact
The typical issues of fact in a patents case are:
- whether an item of prior art was made available to the public before the priority date, particularly if the prior art involves a prior use of something rather than a publication; and
- the precise details of how the alleged infringing article or process operates.
In many cases, these questions will have been resolved before trial by the processes of disclosure and by admissions. If the matters are in issue, then evidence will be needed.
Evidence of fact can be admitted in patents proceedings by way of witness statements accompanied by any relevant documents as exhibits. The provision of trial witness statements is governed by Practice Direction 57AC of the CPR. Where a witness statement is being relied upon at trial, the evidence should be within the direct knowledge of the witness, who must be willing to be cross-examined on the contents of that witness statement or anything else about the case about which they have knowledge. The witness will be required to sign their witness statement with a clear statement that its contents are true. They will then be asked to reaffirm this under oath if they are called to give evidence at trial. Their written witness statement will generally stand as their evidence in chief at trial, so they will not be required to repeat it orally. As such, a witness’ oral evidence will be limited to cross-examination by the opposing party’s legal representative(s) followed by, if necessary, reexamination.
184.108.40.206 Expert evidence
The provision of expert evidence in civil proceedings is governed by Part 35 of the CPR, supplemented by the Guidance for the Instruction of Experts in Civil Claims.128 As noted above, the court’s permission is always required to adduce expert evidence. Expert evidence is restricted to that which is reasonably required to resolve the proceedings.129
Patents cases are cases in which technical expert evidence is nearly always a critical part. In most cases, the parties will each call an expert or experts in the relevant discipline or disciplines. An expert’s duty is to help the court on matters within their expertise, and their role is to assist the court by providing objective, unbiased opinions on such matters.130 This typically involves the expert putting themselves into the shoes of the skilled person in the relevant art at the relevant date of the patent. An expert must be independent, and their duty to the court overrides any obligation to the party instructing them, despite the fact that that party may be responsible for their remuneration.131
To protect the expert witnesses – particularly from criticisms of lack of objectivity in approaching a piece of prior art with hindsight (i.e., with the invention in mind) – lawyers instructing experts typically provide instructions to the experts in a fairly regimented manner, following guidance from the courts.132 Expert reports are thus prepared carefully and in a sequential way so that the expert comments first on the common general knowledge and the prior art before they have sight of the patent in issue.
Expert evidence is provided in detailed written expert reports. An expert report must comply with the requirements set out in the Practice Direction 35 of the CPR at paragraphs 3.1–3.3. This includes the expert confirming in writing that they understand their duty to the court and have complied with it and that the expert is aware of CPR Part 35, its corresponding practice direction and the Guidance for the Instruction of Experts in Civil Claims.133
As with evidence of fact, an expert’s written report stands as their evidence in chief at trial, and they do not need to repeat it orally. At trial, the experts will nearly always be cross-examined at length by the opposing party’s legal representative(s) on the contents of their report and, if necessary, reexamined.
Besides technical evidence on the subject matter of the invention in the patent, expert evidence can also be provided, if needed, on other aspects of a case, such as the laws of other countries (by expert lawyers in the relevant jurisdiction).
9.6.9 Technical primers and statements of agreed common general knowledge
220.127.116.11 Technical primers
For anything other than the simplest technology or subject matter, the court will normally make provision at the CMC for the parties to provide an agreed technical primer. This is designed to be an introduction to the technology for the benefit of the trial judge and contain the basic undisputed technology relevant to the case. The parties typically identify which parts of the primer they agree form part of the common general knowledge of the skilled person in the art at the relevant date.
The technical primer is produced sufficiently in advance of the parties preparing their expert evidence so as to avoid the experts unnecessarily repeating the same material in their reports as is covered in the primer. Generally, the claimant will produce a first draft of the primer, on which the defendant will provide comments, including any additions or deletions, before the parties agree on the contents of the final document. Parties will often ask their instructed experts to assist in preparing the technical primer.
18.104.22.168 Statements of agreed common general knowledge
More recently, practice in the Patents Court has been moving away from the provision of technical primers and toward what have become known as statements of agreed common general knowledge. These are intended to set out where the parties (or, typically, their respective experts) agree on aspects of the common general knowledge. Consequently, statements of agreed common general knowledge tend to be produced after the parties have exchanged expert evidence.
Once the contents of the statement have been agreed upon between the parties, it will typically be provided to the judge at the same time as the parties provide to the court their skeleton arguments for trial (see Section 22.214.171.124.1 below). The parties will also, at that stage, be required to provide an agreed list of disputed common general knowledge, which is intended to indicate the areas of dispute that remain between the parties on the common general knowledge that the judge may wish to decide. The judge may ask the parties to revise this list after trial to reflect any issues that have fallen away.
It is very common in patents actions for parties to rely upon or to seek disclosure of documents that a party (or a third party) considers to be confidential (in whole or in part). For example, product and process descriptions often contain confidential information. However, when evidence or a document has been read to or by the court or referred to at a hearing that has been held in public, the restrictions on that document only being used for the purpose of the proceedings are lifted.134 Further, interested parties may request access to the evidence or document, and any confidentiality in it may be lost. How these documents are addressed at trial is therefore important, as they must be appropriately managed.
The usual practice in the English courts is for the parties to agree to a “confidentiality club” (whether inter-parties or under the terms of a court order). These regimes usually provide that the parties’ lawyers, experts and certain individuals giving instructions may see the confidential material. The parties will therefore provide both confidential and non-confidential versions of any documents prepared or disclosed. In some cases, this is done by including any confidential information in an annex to the main document, but, more frequently, it is achieved through the use of redactions. The Patents Court Guide contains “confidentiality club” precedent documents.
At trial, if a confidential document is to be discussed, there are usually minor practical ways to address this. For example, the parties’ lawyers may refrain from orally mentioning any confidential information, instead asking the judge to read the relevant information to themselves from a document. Alternatively, where a more significant discussion is required, the court may sit in private (known as sitting in camera), but only when a good case can be made that it is necessary in the interests of justice to do so. In patents cases, this is only likely to be when evidence about technical trade secrets is to be given.
Where this happens, any recording or transcript of the proceedings will also be kept separate such that only people allowed access to the confidential information may view it. Given the principle of open justice, the court is generally reluctant to sit in private, particularly if the relevant confidential details do not have to be read out. When the court sits in private, members of the public and those outside any confidentiality club will be asked to leave the courtroom. Once the confidential evidence has been given, the court will again sit in public.
Once the trial is concluded, the parties must then seek an order from the court to restrict or prohibit the further use of any document, thus preventing the information from becoming public for the reasons outlined above.135 Such orders are known as “31.22 Orders,” after the provision in the CPR that governs the subsequent use of disclosed documents. The judge will need to be persuaded as to why the relevant material is truly confidential. Where such an order is made, the general rule regarding documents read to or by the court or referred to at a hearing that has been held in public is overridden, and the confidentiality of the documents is maintained. Where judgment is to be reserved to be delivered at a later date (as is common in patents cases), a 31.22 Order will be sought orally on a pro tem basis pending the further hearing on the consequential issues to be addressed after judgment.
9.6.11 Pre-trial review
A few weeks, typically three to five weeks, before the trial, the court will hold a hearing called a pre-trial review to carry out any case management required to ensure the trial runs smoothly. This provides the opportunity for any procedural matters outstanding to be sorted out and arrangements made for trial, such as arranging for witness evidence to be given remotely or for the court to sit late to accommodate a witness’s availability.
9.6.12 Alternative procedures
It is worth noting for completeness that, in addition to that described above, there are a variety of alternative procedures that the court can be asked to adopt in patents proceedings, including:
- the Shorter Trials Scheme;
- the Flexible Trials Scheme; and
- a streamlined procedure.
All of these variously remove certain aspects of the standard procedure, such as disclosure or cross-examination of all witnesses and experts, reducing the time to trial and the overall cost of proceedings.
126.96.36.199 Types of trial
Historically, all patent trials took place in person, though dispensation could be obtained for one or more witnesses to appear via video link where it was not possible – or it was desirable – for them to appear in person. Interim hearings could be conducted remotely, for example, by telephone, but such an approach was rare in patents cases. However, the COVID-19 pandemic led to the rapid adoption of remote-trial techniques, and one of its legacies insofar as the court system is concerned is likely to be the increased use of remote technology in hearings and trials.
Trials generally do not take place during the court vacations (e.g., in August).
188.8.131.52.1 In-person trials
A trial in person – that is, a trial where everyone appears in the courtroom – is the most common form of trial in England and Wales.
The attendees from the court will be the judge and the court clerks. The parties will be represented by their barrister(s) and solicitor(s) and may also send one or more representatives. (While most trials involve two parties – a claimant and a defendant – it is reasonably common to have multiple parties in a single trial on the same claim if convenient: for example, where there are multiple defendants.)
Witnesses will also attend on the days on which they are due to give oral evidence and may choose to attend the entire trial. Indeed, witnesses (including experts) are generally entitled to listen to the cross-examination of their opposite numbers. There usually will be a transcript writer present. Finally, English court proceedings take place in public unless the court decides it needs to sit for a (short) time in private, so there are often members of the public and press present in the public galleries. Indeed, the Patents Court judges have traditionally had a strong preference for trials to take place in open court.
184.108.40.206.2 Hybrid trials
Hybrid trials are trials that take place partly in person and partly remotely. The most common aspect conducted remotely is the giving of witness oral evidence. Historically, a witness needed some special and justifiable reason to give evidence remotely. However, following the COVID-19 pandemic, the use of hybrid trials has increased significantly, not least because witnesses resident in foreign jurisdictions are often unable to travel to the United Kingdom.
Detailed guidance on hybrid trials is set out in Annex 3 to the Practice Direction 32 of the CPR. Importantly, despite the use of this trial format increasing, the court’s permission is required for it. The party requesting the use of videoconferencing facilities at trial must also take care in its organization for two reasons. First, there are certain practicalities that must be considered. For example, relative time zones may mean a witness is giving evidence in the middle of the night where they are based. Second, there are often local rules governing the procedure by which a person must give evidence in one jurisdiction for use in another (as is happening where the witness is based outside of the United Kingdom). Any such local rules and requirements will need to be brought to the court’s attention by the time of the pretrial review hearing and be complied with.
The increased use of remote videoconferencing in trials has also encouraged the adoption of other technologies designed to facilitate this form of trial: for example, court-specific online video platforms and software to enable the electronic sharing of bundles of documents.
220.127.116.11.3 Fully remote trials
Fully remote trials are trials where no part of the trial takes place in person (though the judge may base themselves at the court and sit in a courtroom or in their chambers). It is likely that such trials will be rarer in the future – absent a further pandemic – and may take place only where the specific circumstances of a case mean that this approach should be preferred.
18.104.22.168 Order of events and trial timetable
Directions to trial were discussed in Section 9.6.4 above, and pre-trial reviews were discussed in Section 9.6.11 above. At the pre-trial review, the scope of the trial will have been discussed (by reference to the directions). This may have included a discussion with the court about the timetable for the trial. Trials are then managed to follow that agreed timetable, subject to the need to deviate for any reasonable reasons.
In general, each side presents its case in turn, with the claimant going first unless the court orders – or there is agreement – otherwise. For example, it is common in revocation actions where there is a counterclaim for infringement by the patentee for the patentee to go first unless infringement is admitted subject to the validity of the patent.
22.214.171.124.1 Opening written and oral submissions
Prior to the commencement of the trial, the parties will invariably prepare written skeleton arguments for their case. The purpose of these arguments is to set out the background to the parties and the case, to introduce the witnesses, to set out the issues of both fact and law that the court will be required to grapple with at trial, and to advance a party’s arguments on those issues (e.g., so-called squeezes between noninfringement and invalidity). These are then exchanged between the parties and provided to the judge, who will hear the case several days before the trial begins.136 Their importance cannot be underestimated:
As anyone who has drafted skeleton arguments knows, the task is not rocket science. It just requires a few minutes clear thought and planning before you start. A good skeleton argument (of which we receive many) is a real help to judges when they are pre-reading the (usually voluminous) bundles. A bad skeleton argument simply adds to the paper jungle through which judges must hack their way in an effort to identify the issues and the competing arguments. A good skeleton argument is a real aid to the court during and after the hearing.137
The trial then begins with short oral opening submissions from the party going first. The purpose of these submissions is to succinctly introduce the case and the live issues (which may have changed since the skeleton arguments were prepared). Opening submissions also provide the judge with the opportunity to ask questions, to clarify certain points based on the parties’ written skeleton arguments and to give directions to the parties (if needed). Sometimes the other party (or parties) will respond to the opening submissions, but only if it is necessary to do so at this stage. Long opening submissions are actively discouraged (indeed, a purpose of written skeleton arguments is to minimize the amount that needs to be said in a party’s opening submissions). Generally, opening submissions take no more than half a day, and they are often dispensed with entirely, the trial beginning with the first witness being called into the witness box.
126.96.36.199.2 Witness evidence
Opening submissions are followed by the giving of witness evidence for the party in question. The general rule is that a party’s fact witnesses will go first, followed by their expert witnesses. However, this general rule is often disrupted by practicalities such as witness availability and is therefore frequently varied. Individuals who have signed a product and process description must also make themselves available at trial to be asked questions.
The provision of evidence at trial takes place in three steps: examination in chief, cross-examination and reexamination. However, not all witnesses are called to give evidence at trial. A witness will have given a witness statement (or prepared an expert report) that acts as that witness’ evidence in chief. Any witness who has provided a written statement upon which a party wishes to rely must be called to give oral evidence at court, but the court may order otherwise (particularly where the other party has confirmed that they do not wish to cross-examine the witness). Prior to any witness giving evidence, they will be asked to swear or affirm (at the witness’ option, and on a relevant holy text if desired) that their evidence will be true.
Fact evidence often relates to whether a particular prior use happened and was made available to the public. Such evidence should not stray into providing an opinion. Expert evidence is the primary evidence on many aspects of patent law, such as obviousness and insufficiency. If a witness is being cross-examined during a break in their evidence (e.g., over lunch), that witness is said to be in “purdah” and must not discuss the case with anyone during the break.
188.8.131.52.3 Examination in chief
Examination in chief is conducted by the legal team of the party calling the witness. It is almost always very brief, given that the witness has already provided a written statement. Its purpose is to confirm the identity of the witness and that they still agree with their written statement. If needed, a witness also may be asked to correct small errors in their written statement.
Cross-examination is a key part of English proceedings and is where a witness (whether fact or expert) is questioned by the other party’s legal team. Not all witnesses will be cross-examined; it will depend upon the evidence provided and its connection to the facts in issue in a particular case.
The barrister (or solicitor-advocate) will put questions to the witness that are designed to test the witness’s written evidence. They will almost certainly be “leading questions,” meaning questions that are designed to elicit a yes or no response. The witness will also be referred to documents related to their statement or to the statements of other witnesses giving evidence in the trial. It is also possible for a witness to be presented with documents not previously in the case. Where this is to occur, the other party should provide the documents to the witness in good time before they give evidence at the trial (usually at least 48 hours) to prevent witness ambushing.
For expert witnesses, who often provide the core evidence in patents cases, there is also an option under the CPR for the provision of concurrent expert evidence,138 though it is not commonly used in the Patents Court. The process has been referred to as “hot-tubbing”: both experts are sworn in at the same time, and the judge initiates discussions between the experts on the issues in dispute and asks questions. Each issue is taken in turn. Once one issue has been addressed by both witnesses, the parties’ representatives can ask questions of the experts to clarify or test their opinions. At the end of the exercise, the judge can summarize the evidence given by both experts and ask if the summary is correct.
After cross-examination, it is possible for the witness to be asked a few questions by the barrister (or solicitor-advocate) acting for the party who called the witness. If this occurs, the questions tend to be short and may only relate to matters arising from the cross-examination of the witness. As with the evidence in chief, the questions on reexamination must be open and cannot be “leading.”
184.108.40.206.6 Closing written and oral submissions
After the witness evidence is complete, the parties must make their closing arguments. In patents cases, the parties will usually have the opportunity to prepare written closing submissions. These act as a summary of the evidence (both written and oral) presented during the trial as against the issues in the case that the judge has to decide. In this regard, they frequently draw attention to particular points raised by the other party where the evidence was inconsistent with that party’s case, and they also allow a party the opportunity to clarify that, in light of the evidence given at trial, a particular point is no longer be pursued. As well as addressing the evidence, written closing submissions will also address the issues of law in the case.
Written closing submissions can be very lengthy, even though, traditionally, they are written in a short period of time. In a similar way to opening skeleton arguments, written closing submissions are exchanged with the other party and lodged with the judge so that they may be read and considered. The trial timetable usually contains an adjournment of the hearing between the end of the witness evidence and the start of the oral closing to give time for the preparation of written submissions.
The parties will generally then make oral closing arguments. Usually, the party who opened the case will go last, meaning the other party presents their closing arguments first. The purpose of oral closing arguments is to supplement the written closing arguments and to present the final case that each party puts forward for the court to decide, based on the totality of the evidence presented. It is also an opportunity for the judge to ask any final questions and to clarify any issues they are considering.
The time required for the oral closing submissions is generally about one or two days but can be more in bigger cases.
9.6.14 Trial from the judge’s point of view
The listing of cases and allocation of judges to a case are judicial functions. The day-to-day task of listing cases for hearing and managing the court’s diary is undertaken by a listing officer operating under delegated authority from the judge overseeing the court. In the event of a dispute, listing decisions will be made by a judge. Day-to-day allocation decisions are made by the listing office under the supervision of the relevant leadership judge: in the Patents Court, this is the Judge in Charge of the Patents Court, in consultation with the Chancellor of the High Court.
The court’s lists are managed well over a year in advance, and, for cases that require very substantial amounts of court time, the calendar can be managed two or even three years in advance. Unless a case is docketed to an individual judge, the allocation of a judge to hear a trial will not generally take place until one or two days before the scheduled start of the hearing, when the judge needs to starts their preparation. This is to maintain flexibility in listing and efficient use of judicial resources. The technical difficulty rating system (described above in Section 220.127.116.11) is used to assist in judicial allocation.
In cases with a pre-trial review, the court tries to ensure that the judge conducting the review will be the trial judge, in which case allocation happens a few weeks before trial. For trials in the Patents Court, which typically take four to eight working days to be heard, the time available to the judge for preparatory reading will be the one or two working days before the start of the hearing.
In patents cases, the pre-trial review and the preparatory reading are opportunities for the judge to start to become familiar with the relevant technology. The experts’ written reports will contain explanations of the technology, which are aimed at educating the court. During the trial process itself, the parties and the experts will explain the technology to the judge, and the judge is able to ask questions and clarify their understanding.
The hearing itself is conducted in public. Transparency and open justice are of paramount importance. The court can and will sit for periods in private where necessary, as discussed above in Section 9.6.10. Normally, the court sits for about five hours per day, with the rest of the working day spent on preparation and on judgment writing. The sitting times are flexible to accommodate international witnesses, but, subject to that, the normal sitting times are from 10 a.m. or 10.30 a.m. until 1 p.m., and 2 p.m. until 4.15 p.m. or 4.30 p.m.
The hearings are recorded by the court. The court’s recording can be transcribed after the event, but, generally, the parties will pay a private firm of transcribers to make a contemporaneous transcript of the hearing.
At the end of a hearing, if the matter is short, such as for a case management hearing, the judge may give an oral judgment immediately. These ex tempore judgments are recorded, and a transcript can be produced later if needed. These oral judgments will only be transcribed if someone (a party or member of the public) asks for them. For more substantial cases, such as patent trials, judgment will be reserved. The judge will produce a written judgment.
First-instance judges will generally prepare the written judgment alone. There is no full-scale system of US-style law clerks to assist judges at first instance, although there is a Judicial Assistants Scheme for the High Court, which some judges use.
Judgments are quite lengthy. They address the applicable law, reasoning out any conclusions on disputed aspects. They will make any relevant findings of primary fact, summarizing the evidence called upon on those issues and giving reasons for the findings. In general, the judgment will address major alternative aspects of a case. Obviousness will generally always be considered even if, for example, the patent is found to lack novelty. This is because, unlike any appellate court, the trial judge will have had the benefit of hearing the expert witnesses. Both validity and infringement will usually be addressed.
In the Patents Court, there is no set period of time by which the judgment must be due, but it is usual practice for judges to provide judgments within three months of the end of the trial, often much sooner.
The judgment is initially provided to the parties on a confidential basis in draft. The parties are invited to identify typographical errors as well as any omissions; however, it is not an opportunity to reargue the case or to put in further submissions. While the judgment remains in draft, it is subject to strict restrictions on its use and dissemination. In particular, it is confidential to the parties and their legal representatives, and neither the draft itself nor its substance may be disclosed to any other person or be used in the public domain. The parties are required to take all reasonable steps to ensure that the confidentiality of the draft judgment is preserved, so it is common for it to only be circulated among a limited group of individuals. Further, no action is permitted to be taken by a party (other than internally) in response to the draft before judgment has been formally handed down. A breach of any of these obligations may be treated as a contempt of court.
The formal hand down of the judgment usually takes place approximately one week after the draft is received by the parties, after the court has considered any proposed amendments. This is usually an administrative matter where no parties attend the court; a separate date will be set after the judgment is handed down to hear arguments on the form of order the court should make consequential upon the judgment.139 This allows the parties some time to consider the issues arising from the judgment and to prepare any necessary evidence, for example, on costs. If the consequentials hearing is delayed to a later date, any party that is considering appealing the decision will need to ask the court to extend the time to file any appeal on a pro tem basis, since the time to file an appeal runs from the time the judgment is handed down.140 At the same time, a party will request a 31.22 Order if relevant (see Section 9.6.10 above).
9.6.16 The consequentials hearing
The consequentials hearing (unless matters are agreed between the parties) takes place before the trial judge within 28 days following hand down of judgment to address the form of order that should follow the judgment.141
Until the final order following judgment is made, the judge is not functus officio, and so, strictly, any new matter that has a significant bearing on the case should be raised with the judge and not saved for appeal. Cases where something occurs in the interregnum between judgment and the final order that affects the outcome of the case are extremely rare. However, it is an important consideration, as the appellate courts prefer matters to have been raised with the judge at first instance where possible.
9.6.17 Alternative dispute resolution
Throughout any proceedings, including patents proceedings, the court expects the parties to investigate alternative dispute resolution (i.e., explore whether their dispute can be settled out of court). If a party in proceedings invites the opposing party to participate in alternative dispute resolution, and the opposing party either refuses to participate or greets the invitation with silence, the court may well consider this to be unreasonable and penalize the opposing party in costs in some way.
The most common method of alternative dispute resolution that occurs during proceedings is mediation. All settlement discussions between the parties, including proposing, setting up and conducting a mediation, should be “without prejudice save as to costs.” This means that they are confidential and cannot be disclosed to the court during the proceedings until the point is reached where the court is considering what award of costs to make.
Mediation in these circumstances is typically arranged for a day with the parties exchanging short written mediation statements beforehand, which, as well as setting out their position in relation to the proceedings, provides an offer of settlement that they would be prepared to accept – effectively, their opening offer. The mediator is selected and agreed to between the parties, and the mediator’s costs and any mediation venue costs are typically shared equally between the parties.