27 November 2010

Patents County Court Practice: Westwood v Knight

Save that the claimant is a well-known fashion designer, Westwood v Knight [2010] EWPCC 16 (19 Nov 2010) is a bog standard case management conference in a trade mark and copyright infringement and passing off claim. The reason why this case deserves attention is that the Judge gave some useful guidance on the following issues

  • Directions for transfer to the Patents County Court
  • Skeleton arguments at the CMC
  • Pleadings
  • Statements of truth, and
  • Evidence.

Directions on Transfer

This case had started life in the Chancery Division just before the long vacation and was transferred to the Patents County Court on 1 Oct 2010, the day that the new Patent County Court rules came into force. On the order for transfer the master had directed a CMC on the first open day after 22 Oct 2010. The judge commended that order as “a useful thing to do since it ensured that the matter came before the Patents County Court for directions at an early stage after transfer.”

Skeleton Argument

In this case the claimant’s solicitor filed a witness statement which addressed various matters arising and explained the claimant's position but no skeleton argument. Judge Birrs QC described that as a “useful exercise” adding that “in this case such a skeleton would have been unnecessarily duplicative and a pointless cost”. He explained that that might not always be appropriate:

“In the Patents County Court parties' skeleton arguments at the interim stage need not be filed if they are not necessary. Nevertheless it is obvious that in some cases a skeleton argument on at least some issues will be needed at the CMC. The matter needs to be approached on a case by case basis. Part of the point of the new CMC procedure in the Patents County Court is that the court will pre-read into the case as a whole in order to conduct the CMC. A highly abbreviated skeleton argument on specific issues may well be necessary but there should be no need for extensive duplicative skeletons.”

Pleadings

CPR 63.20 (2) requires a claimant to state whether the claimant has complied with paragraph 7.1(1) and Annex A (paragraph 2) of the Practice Direction (Pre-Action Conduct). Paragraph 7.1 (1) provides:

“Before starting proceedings (1) the claimant should set out the details of the matter in writing by sending a letter before claim to the defendant. This letter before claim is not the start of proceedings.”

Para 2 of Annex A of the Practice Direction specifies the ingredients of such a letter. As the case had started in the High Court where it is not necessary to plead compliance with the Protocol, the claimant’s counsel needed permission to amend his particulars of claim.

Statements of Truth

CPR 63.20 (1) modifies CPR Part 16 in that a statement of case should set out concisely all the facts and arguments upon which the party serving it relies. The Judge explained that the reason for that rule is that the Intellectual Property Court Users’ Committee recommended that statements of case should stand as evidence in themselves and indeed constitute the primary evidence on which a party relies. Accordingly statements of case have to be signed by the person or if more than one all the persons with knowledge of the case. That had not been done in the original pleadings in Westwood so the judge gave permission for that to be done now. His Honour added that where more than one person signs a statement of case each should indicate the bits of the pleading that he or she is confirming.

Evidence

CPR 63.23 (1) requires a court to “identify the issues and decide whether to make an order in accordance with paragraph 29.1 of Practice Direction 63.” That paragraph enables the judge to order (1) specific disclosure, (2) a product or process description (or a supplementary product or process description where one has already been provided), (3) experiments; (4) witness statements; (5) experts’ reports; (6) cross examination at trial; and (7) written submissions or skeleton arguments but only if the court is satisfied that the benefit of the further material in terms of its value in resolving those issues appears likely to justify the cost of producing and dealing with it. Also, the order must relate to specific issues identified by the judge in accordance with CPR 62.23 (1). As the judge acknowledged at paragraph [36] of his judgment, this is little short of revolutionary in the English adversarial tradition:

“These interlocking provisions represent a radical departure from previous English civil procedure, at least as it is practiced in the courts handling intellectual property claims. The provisions are a key element of the new procedure and its purpose in making intellectual property cases less expensive and quicker to resolve. The parties do not have a free rein to call any evidence they want on any topic. The court will control the procedure. Further material will only be permitted on identified points and only if it satisfies the cost benefit test in paragraph 29.2(2). If material has not been permitted in this way, CPR Pt 63.23(2) sets a significant hurdle in the way of its introduction into the case. It seems to me that one important consequence of the provisions is that, subject to proper safeguards, some relevant evidence will be excluded from trials. Merely because some evidence is relevant will not necessarily justify permission being given to adduce it. On the other hand the parties need to know that the court will give permission for evidence to be filed in a proper case since otherwise there will be a temptation to overload the statements of case with unnecessary material.”

In the case in front of him the judge identified 7 issues and applied the cost-benefit test in paragraph 29 to each of them. On some issues he found the pleadings would suffice. On others he ordered further witness statements. CPR 63.23 (1) and paragraph 29 (1) provide the key to the new Patents County Court procedure because this cost-benefit balancing exercise is the instrument for preventing delay and controlling costs.

Issues still to be decided

The judge purposely left one big issue for another day, namely whether the £50,000 costs cap should apply to all the costs in a case such as this that had been transferred from another court or just the costs from the date of transfer. As only one party was at the case management conference and as it had not prepared submissions on the point, it was not possible for the judge to make a determination at the point. However, as very little had been done in the High Court before transfer it was not likely to make much practical difference.

Patents County Court Guide

The new procedure with its rigid control of costs will take a lot of getting used to. The Working Group had recommended model pleadings in a new Patents County Court Guide to assist practitioners to get the right level of detail in their pleadings. As the Report was published on 31 July 2009 it should have been possible to prepare a new guide before the 1 October 2010.

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