PPDs and standard disclosure - can you have your cake and eat it?

In the post-Brexit referendum world, is anyone else suffering from fatigue concerning the English proverb regarding the consumption of cake?  This was even before a long lens photographer caught handwritten notes from a conservative MP's aide leaving a meeting with the Department for Exiting the EU last week, apparently commenting on a preferred post-Brexit model for the UK (see here).  [The IP Kitten - trained from day one to keep files and notes hidden when in public places - shudders at such wrecklessness]. 

What about PPDs and standard disclosure in the Patents Court?  Can the patentee be pro having cake and pro eating it? Mr Justice Birss has provided the answer in Varian Medical Systems AG v (1) Elekta Limited; and (2) Elekta Holdings Limited [2016] EWHC 2679 (Pat).  This GuestKat apologises for continuing the cake idiom, but suggests it is worth it so that she can share a photo of the White Book (Volume 2) cake, as baked by her multi-talented Stephenson Harwood colleague Stephanie Wickenden.

Essential eating for all IP litigators

The dispute concerns Varian's patent concerning a machine for use in radiotherapy in which a magnetic resonance imaging system is used to image the tumour which is receiving or is to receive the radiotherapy.  The radiation beam comes from the linear accelerator. The invention provides for the control of the radiation beam in "real time" so that, if the tumour moves, as compared to its location as specified in the treatment plan, the radiation beam can follow it.

The claimants pleaded case included the following: "After publication of the patent, prior to the issue of the claim form and thereafter, the defendants have infringed and threatened to intend to infringe [the claims] by doing the following acts in the United Kingdom without the claimant's consent: (a) ... offering to dispose of ... a system comprising an MRI (magnetic resonance imaging) guided radiotherapy machine as claimed in at least the aforesaid claims of the patent."   The defendants contend that they do not offer for disposal a machine with the relevant characteristic.

CPR Part 63 and Practice Direction 63 para 6.1

The claimants submitted that offering for disposal was in issue but that no disclosure has been given in relation to it by the defendants.

The application before Birss J concerned a discrete point of patent practice namely what the Product and Process Description (PPD) is for, and how the provision of a PPD interacts with a party's standard disclosure obligations.  To the best of this GuestKat's knowledge, the issue does not appear to have been addressed head on in any other reported case.  CPR Part 63 r63.9 relates to disclosure in patent cases and practice direction 63PD 6.1 is the provision which deals with product and process descriptions:

"6.1 Standard disclosure does not require the disclosure of documents that relate to –

(1) the infringement of a patent by a product or process where –

(a) not less than 21 days before the date for service of a list of documents the defendant notifies the claimant and any other party of the defendant's intention to serve –

(i) full particulars of the product or process alleged to infringe; and

(ii) any necessary drawings or other illustrations; and

(b) on or before the date for service the defendant serves on the claimant and any other party the documents referred to in paragraph 6.1(1)(a)."

Birss J concluded that paragraph 6.1 is concerned with the nature and characteristics of the product or process in issue and the question of whether the product or process falls within the claims.  The fact that Elekta had served a Product Description in accordance with the practice direction did nothing to alleviate the defendants from whatever disclosure obligations they otherwise had relating to acts of infringement.  In other words, the applicant's request for standard disclosure related to a different issue [more of a coffee with your cake than a second slice, muses the IP Kitten].  As a result, there was no reason why Elekta should not disclose documents which relate to communications with customers or potential customers relating to the development of its product.