A test-drive for the Unified Patent Court: Part V the case management hearing

This weblog has hosted a series of posts on the subject of litigating patents under the experimental, not quite hatched but nearly-there Unified Patent Court (UPC) system that has been created for the new Europe, with its fascinating new collection of Rules [now that everyone has got used to the 17th draft of the Rules of Procedure, an 18th Draft has been more or less agreed and its adoption has been predicted for this coming December: see PatLit post here].  

This series, recording experiences of a real-time mock patent trial under the new law and proposed rules, has been masterminded by our friends at Bristows, through the effort and ingenuity of Alan Johnson and Alexandria Palamountain. The first four reports in the series are

* "A test-drive for the Unified Patent Court" (June 2014, here), 
* "A test-drive for the Unified Patent Court: Part II" (October 2014, here),
* "A test-drive for the Unified Patent Court: Part III"" (25 February 2015, here)
* "A test-drive for the Unified Patent Court: Part IV" (20 May 2015, here)

Courtesy of Bristows, the Kats now bring you Part V, dealing with case management:

L is for 'litigate'

The oral hearing took place on 28 July. This, the first post on that (of which there will be more tomorrow), covers the case management part of the hearing because quite a lot remained to be decided notwithstanding the previous orders made, notably at the interim conference.  The presiding judge (“Judge” Westmacott) explained to the advocates that the judges had met prior to the oral hearing to discuss how the hearing would be run in the light of various proposals and submissions from the parties.  As it transpired, even where the parties were in agreement, the panel took a different view on some matters. 

The case concerned two patents, a pharmaceutical compound patent (and SPC) and a second medical use patent (and SPC), numbered respectively the 444 and 567 cases.  The 444 patent had already expired, and the judge rapporteur at the interim conference had previously decided that a late-raised defence of invalidity could not be admitted into the case on liability.  This was a seemingly impregnable compound patent, and initially the defendants evidently could not find any prior art good enough to raise a credible attack; by the time they had found something, they were out of time under the UPC timetable.  Hence, rather than delay the case, the judge rapporteur, as a compromise, ruled that invalidity could be raised as a defence to damages.  

444: would the infringement
claim hold water?

 This left the question of infringement of 444 to be decided at the oral hearing on liability.  However, the defendants had been forced to admit some acts of infringement (importation and storage), while arguing as to whether they had placed the product on the market, and also the extent and economic consequences of infringement.  In consequence, the court considered that it had enough material before it on the papers to make a finding (subject to validity) that the patent / SPC had been infringed and ruled that any arguments about extent and consequences of infringement were matters for the damages inquiry.  Accordingly the oral hearing considered only the 567 second use patent. 

The parties had agreed that it would be sensible to question the witnesses in the morning and hear submissions in the afternoon.  The court disagreed, however, preferring to deal with the issues in turn:  validity then infringement.  It also considered that the rule on conduct of the oral hearing (R.112.2) provided a framework which suggested (though perhaps not mandated) submissions first, then questioning of witnesses.  In that regard, the court noted that neither party had requested a witness hearing in advance of the oral hearing.  It therefore set out a timetable for submissions on validity, questioning of experts, then supplementary submissions on validity.  It ruled that the court (the technical judge) would question the experts, but that the parties could ask follow on questions.  

Not all oral disclosures
are fatal to a later patent

On validity the court also pointed out that it had not summonsed one of the witnesses requested by the defendants to appear.  He was a witness (Dr Stevenson) whom the defendants wanted to give evidence of an alleged prior oral disclosure.  The way this point had developed during the case was as follows.  Dr Stevenson was an author of a paper relied on as a part of the state of the art.  Dr Stevenson gave a short piece of evidence saying that he had also presented the results of the work discussed in the paper (and in subsequent months) at a conference, but said no more about that oral disclosure. Later, the defendants pleaded a set of slides and speaker notes as evidence of an oral disclosure and were allowed to introduce that new art into the case.  However, for whatever reason (but reading between the lines, perhaps their witness was not as cooperative as he might have been) no supplementary evidence was adduced to say that these were the slides he actually presented, and that the notes reflected what he actually said.  There was merely a statement in the defendants' pleading that they intended ("hoped" might have been more accurate) to rely on further evidence from Dr Stevenson. 

 In explaining why the court had not summonsed Dr Stevenson, it explained that the panel did not see why oral evidence should be admitted which went any further than the written evidence actually submitted given the failure to serve a supplementary witness statement.  It gave the defendants’ advocates a further opportunity, however, to persuade the court to allow the introduction of oral evidence from Dr Stevenson.  In these submissions, the defendants stated that Dr Stevenson was actually in court and could answer the questions pertinent to the oral disclosure issue, and that accordingly the court could have a simple answer to the question as to whether the slides relied upon were those presented.  However, the Court declined, saying it would give its reasons later. 

On infringement the court had a similar issue to determine -- this time on the admissibility of late-filed evidence.  This was the evidence of one Dr Greg Bacon, who had been a sales representative of the defendants, but who had been sacked for promoting off-label sales.  He explained in his statement that he had earlier been approached to give evidence by the claimant but had declined.  Then he had bumped into an old customer who had already agreed to give evidence and had heard what was being said about his old company’s policy.  He said he had felt compelled to give evidence so that the true position was known to the court.  The court held that Dr Bacon's evidence was highly relevant and the defendants had had the evidence long enough not to be prejudiced.  Hence, it would be admitted.  However, the court considered that, in fairness to the defendants, they should be permitted to question Dr Bacon, rather than the court leading the questioning. 

Finally, the court ordered that, for infringement (in contrast to validity), the witnesses would be heard before any submissions had been made. 

With all these directions given, the hearing proper began -- but more of that tomorrow.