Being a vacation judge is no holiday

It seems that Lord Hoffmann is not the only Law Lord who doesn't mind stepping down to hear an appeal to a lower court than his own (see IPKat post here). WL Gore & Associates GmbH v Geox SpA [2008] EWCA Civ 622, heard on 10 June 2008, was a decision of a two-man Court of Appeal for England consisting of Lord Justice Rix and and Lord Neuberger of Abbotsbury. It was noted on LexisNexis Butterworths' subscriber service.

This dispute arose back in September 2007 and it concerned four patents owned by Geox. The patents were for sole structures for footwear comprising waterproof breathable membranes. Gore sought a declaration of non-infringement in respect of two designs of shoe construction, plus revocation of each patent on the grounds of novelty, lack of inventive step and insufficiency. Last January the parties agreed directions; an order was drawn up in February, providing that the trial would be fixed not before the first mutually convenient date on or after this coming November 2008. Meanwhile the parties were free to apply for further directions and attendance.

It gradually dawned on Gore that the directions, which would place the trial in January 2009, caused it commercial problems and since it ideally wanted to know the outcome of the proceedings by 12 September 2008 when a big trade exhibition, attended by prospective licensees, was due to be held in Germany. Gore said that, when it agreed the directions, it was unaware that prospective licensees would refuse to commit themselves in the absence of the court's decision. This being so, Gore sought an expedited hearing, preferably in July 1998.

The judge said no. First, the parties had agreed the timetable and there was no valid reason for varying it. Secondly it was inappropriate to speed things up: there had been no material change of circumstances and no-one had been misled as to the correct factual position. What's more, it this trial was sped up it would be likely to slow down other trials which in the ordinary course would have been heard earlier.

Gore appealed, at the same time proposing that the hearing take place in September since the two principal judges of the Patents Court would be sitting then as vacation judges. It was clear that the case could be heard in September and expedition in such circumstances would not involve the sort of queue-jumping problems which had rightly been identified.

Right: in an attempt to make the judiciary appear more accessible and less frightening to litigants, the Department of Justice has instructed Vacation Judges to dress in a manner more in keeping with vacations. Seen here, standing in front of the Royal Court of Justice, is Mr Justice Thribblewell of the Chancery Division

The Court of Appeal allowed Gore's appeal. In essence it concluded that

* it was open to the court to consider the application on its merits, even though the original order had been made by consent and the ground for departing from it could have come to Gore's attention before the order had been agreed;

* the whole point of the agreement in this case was to fix agree directions for the trial and there was no real issue on concerning those directions in which the parties were in dispute: they were merely trying to find a sensible procedure to which they could then adapt their internal procedures. This being so, the order did not need to be treated as a binding contract;

* the court should retain a degree of flexibility and control over its own procedure, especially on matters such as speedy trial;

* the fact that the hearing could take place in September put a quite different complexion on the application;

* in considering an application such as this there were four factors to take into account: (i) did the applicant show good reason for expedition; (ii) would a speedy trial interfere with the good administration of justice; (iii) would expedition cause prejudice to the other side; and (iv) were there any other special factors?

* these criteria being established, it would be penal to deny the application to bring the trial forward.

The IPKat thinks this is right: if no-one is inconvenienced and a dispute gets resolved earlier, we are all the winners -- particularly since patents only have short lives and it's a shame if they have to live under the cloud of alleged invalidity any longer than they need to. Merpel says, but what about costs in this application? If Gore had only been awake, this would never have happened. Don't the lawyers talk to the marketers?