UPC Mock Trial - a Kat reports from Paris - Part deux

Continuing from the previous post, the second part of the event was a separate hearing (notionally several months later) on the granting of provisional measures (interim injunction - in particular to prevent defendant from launching product at an upcoming international fair, that would take place before the trial on the merits).  This was now an inter partes hearing with the defendant present as well.

The claimant urged that there was clear infringement, and a patent of strong validity, as well as urgency.

Infringement
As evidenced from the report from the inspection that was ordered in the earlier hearing, the claimant alleged that all of the points of infringement were made out - several points were uncontested, and on the contested points the claimant considered infringement to be also present.

The contested issues were (as you will see from the supporting documents) - and to get slightly technical for the first time - whether the method steps of the method claim had to be carried out in the order recited in the claim for the patent to be infringed, and whether the claimed "resin material" to fill in the voids between protuberances of the abrasive material could be satisfied by a non-woven polyamide fabric.

The Rapporteur wondered whether the order of the steps was part of the reason that the Opposition Division found the claim valid, but the claimant said that the feature critical for the OD decision was the filling of the voids, not the order of the steps.  Claimant urged that methods other than the method exemplified in the patent could be envisaged and that it was wrong to construe the claim as limited to the example.

Validity
Claimant argued that the patent was valid - there was only one prior art document D1 - this had apertures (voids) that were not filled in, and was manufactured using chemical  deposition .  The patent by contrast used electrochemical deposition and filled in the voids between the metal area with resin.

Validity was interrupted by the President to request moving onto the need for provisional measures, in relation to which claimant argued as follows:

Need for provisional measures

• Clear infringement
• Strong validity
• Imminent market launch of infringing product
• Substantial loss of market share expected due to high price different (defendant's product significantly cheaper)
• Permanent price erosion expected due to same price difference.

Arguments of the defendant

Now, hearing from the defendant for the first time, they stated:

• Order to preserve evidence wrongly granted and should be revoked - no reason for ex parte proceedings and misleading statements made (that chemical deposition could not produce adequate product and that all relevant method features could not be determined without the inspection that was granted in the first hearing) - even if relevant evidence had in fact been found in the inspection, that could not retrospectively justify it if it had been wrongly granted in the first place
• Claimant had gone on a fishing expedition - defendant would have given process description if it had been asked for (but Rapporteur pointed out that originally filed defence had not mentioned electrodeposition which had been found in the inspection - so that a "big fish" had actually been caught); also the claimant could have purchased a sample through the defendant's website (although this was also questioned by the Court)
• Patent was of dubious validity with very thin inventive step and would be expected to be revoked or limited by the EPO appeal proceedings
• Argued against urgency
• Claimed irreparable harm if kept off the market

There was a bit of argy-bargy about whether defendant was now out of time to challenge the correctness of the granting of the order to preserve evidence, and thus the admissibility of the evidence gathered at the inspection; also whether the report of the inspection was correctly notified to the defendant and whether it had been drawn up by the correct person (by the bailiff or by the the independent EPA).

Defendant argued against provisional measures - defendant would suffer irreparable harm if kept off the market, since they had invested in substantial plant to make the product and would suffer serious financial detriment if they could not use this machinery.

Steam cracker

Defendant also argued that market and price erosion would not happen - this was not the pharmaceutical sector.  If there was to be price erosion, it would already have happened by virtue of the announcement of the defendant's price, even without sales.  A rapid trial would suffice to preserve the claimant's position.  A "steam cracker" was being used to crack a "nut" (an oblique reference to a decision of Birss J). Defendant attacked the validity of the patent, particularly with the broad claim construction that does not treat the order of steps as limiting (which construction would be needed if they were to be found to infringe).  If the last step of D1 was omitted, then the voids would be filled and the product would be the same as the patented product, apart from the electrochemical vs chemical feature that was in any case an obvious alternative.  OD had not been presented with this argument, and if it was presented to the Board of Appeal, the OD decision would be overturned and the patent revoked.

Defendant argued for non-infringement.  Their non-woven material could not be equated with the resin material of the patent.  Their order of steps was different.  The patent required the resin to be "between the protuberances" whereas their non-woven extends over the whole surface.  (The defendant's view of the UK position on claim construction "read the claims and don't bother with the description unless there is an ambiguity" was criticised.)

The Rapporteur wondered why defendant had not sought a declaration of non-infringement - should the defendant have "cleared the way"?  Defendant said that this was not generally accepted within Europe as necessary, although especially in the UK they understood that this was usual in the pharmaceutical sector in particular.

Defendant was criticised by the technical judge for in their defence not stating their actual process, but rather arguing that different processes could be used from the patented process to achieve a product with the features stated on their website announcement.

There was some argument as to whether the reversal of the burden of proof (Art 55 of UPCA) in respect of processes for making new products applied - defendant argued that their product was not "new" in that sense - which required novelty in a patent sense, not in the sense of "a product made for the first time by the defendant".

The argy-bargy on the procedural point mentioned above continued for a bit longer. So did the fish-based metaphors.

"Rubbish", said the defendant

The the Rapporteur asked the parties to consider other methods to settle the dispute and asked their position on the use of means other than the court proceedings.  Defendant said that they would settle on the basis of a free licence, and each side bears their own costs.  Claimant said that other solutions would not have been possible for them because of the serious risk to their business model from the price erosion that they foresaw, so that urgent and ex parte measures were required originally.  Rapporteur asked whether either party would consider mediation.  Claimant said yes if launch was frozen in the meantime.  Defendant said that the proposal was "rubbish" and that claimant's proposal was not acceptable.  This was expanded on in that there was clearly no possibility of a mutually agreeable settlement if each party was to maintain their proposed price, and movement on this fundamental point seemed unlikely (and in any case would be seen as against competition law).

Each party was then given 5 minutes to state their conclusions.  This Kat will not repeat the reiterations.

Instead he will move on to the judgment of the court, which was as follows:

The President announced as follows:

(1) The objections by the defendant to the evidence were unfounded - the evidence form the inspection would be admitted
(2) Defendant ordered not to sell product in patented countries - i.e. interim injection granted
(3) Rejected claimant's request for delivery up of defendant's product
(4) Claimant required to give security in costs - order will take effect only when costs security received by Court
(5) Noted that other forms of dispute resolution rejected by the parties
(6) Registry of Court ordered to convoke an oral hearing in September to achieve a final decision of the case
(7) Costs reserved until the final judgment

A poll of the audience showed that a majority of those voting were in favour of the order (for preservation of evidence and inspection of defendant's premises) in the first hearing having been granted (roughly 100 v 40), but with quite a few abstentions.  Concerning whether the conditions (e.g. confidentiality) that were attached to the order were fair (sufficient to protect the interests of the defendant), the result was about 76 yes and 29 no (with rather more abstentions).  On the main question of the second hearing in relation to the granting provisional measures (interim injunction), only 26 considered that they should be granted, and a very large number (not counted) said no - the opposition outcome to the Court (above in part (4) of the Court's decision).

Although a mock event such as this can only hint at what the proceedings will be like in a real situation, and there was some asymmetry in the supporting documents that clearly pointed to the outcomes that the Court decided on the day in this case (as Mr Maier pointed out "next time we will hear the case before deciding the outcome!"), the event did create a very compelling and engaging atmosphere.  It also demonstrated how many issues of exercise of judicial discretion will have to be grappled with by the UPC once it starts - there is real variation of various national approaches (to which each party appealed) on very many aspects.

The IPKat would like to thank all involved in the organisation of this event (including but not limited to everyone named in the previous post) for a most stimulating and entertaining afternoon.  Apparently there were about 1300 internet views of the event, which were certainly deserved.