England: The PCC - A review of the first four patent cases to come to trial in the PCC

09 January 2013

Neil Jenkins

The Patents County Court or PCC was established in 1990 as a lower cost forum for patent cases than the Patents Court. The intention was that it would attract relatively straightforward patent cases and also provide a forum for resolving disputes involving SMEs.  Despite various attempts over the years to improve its appeal, for various reasons, the PCC has never succeeded in realising its potential.

Following the Gowers review and a proposal from the IP Court Users Committee, in 2010 a new set of procedural rules was introduced and a new Judge, HHJ Birss, was appointed, the intention being to enable the PCC to achieve its original purpose, namely, a low cost forum for SMEs to resolve IP disputes. Despite its name, the PCC in its current guise has jurisdiction to hear disputes concerning not only patents but also designs, copyright, database rights, trade marks and passing off.

The main features of the PCC under the new regime are:

(1) the litigation procedure is more streamlined than that in the Patents Court;
(2) there is a cap of £50,000 on the amount of costs that can be recovered; and
(3) there is a cap of £500,000 on the damages that can be awarded.

It needs to be borne in mind however that the PCC is not the exclusive domain of SMEs. Indeed, the first patent case to come to trial in May 2012 was an action brought by Unilever for revocation of two patents owned by S C Johnson (Unilever v S C Johnson & Son [2012] EWPCC 19 (May 2012). Although the court’s jurisdiction was not raised by the parties, the Judge commented in his Judgment that the case was clearly suitable for the PCC: there had been no disclosure (discovery of documents); the evidence consisted of reports from in-house experts on each side; the legal teams on both sides comprised Junior Counsel instructed by firms of patent attorneys; the trial took 1 and half days.

So, one matter which needs to be considered at an early stage of any patent dispute in the UK these days is whether a prospective action is suitable for the PCC and if so, whether the jurisdiction of the PCC would be advantageous compared to that of the Patents Court.  Guidance on the factors which should be considered in deciding whether an action should be transferred out of the PCC (and by implication therefore whether the action was suitable to be started there in the first place) were given by HHJ Birss in Alk-Albello v Meridian Medical Technologies and Dey Pharma ([2010] WPCC 14 (November 2010).  In that case, HHJ Birss mentioned the following factors as being relevant:

(1) the financial position of the parties
(2) whether the case is appropriate to be determined by the PCC bearing in mind

a. the value of the claim (including the value of an injunction and the amount in dispute)
b. he complexity of the issues
c. the estimated length of the trial (in particular whether the trial will take less than two days)

(3) the importance of the outcome of the claim to the public in general

Following the Unilever case, three further patent cases came to trial in the summer of 2012 with Judgments in all three of them being handed down in July 2012.

In Vernacre v Environmental ((2012) EWPCC 41 (July 2012)), the subject matter was disposable washing bowls made from paper pulp.  There was no disclosure, one expert on each side, the trial lasted less than a day and the legal teams on each side again comprised Junior Counsel instructed by firms of patent attorneys.  Both infringement (of three different products) and validity (added matter, anticipation and obviousness) were in issue.  The Judge held that the patent was valid and infringed by the Mark 1 and 2 versions of the product but not the Mark 3 version.

In Barry Liversidge v Owen Mumford and Abbott Laboratories ([2012] EWPCC 33 (July 2012)), the subject matter was an autoinjector pen used to inject Humira (one of the world’s best selling drugs).  Again, there was no disclosure, one expert on each side and the trial lasted 2 days.  The legal teams on each side comprised more experienced Junior Counsel and a Senior Counsel instructed by firms of solicitors.  Both infringement and validity (added matter and obviousness) were in issue.  The Judge held that the patent not infringed and invalid for added matter and anticipation (and even on the patentee’s construction invalid for obviousness.

Finally, in Bos v Cobra UK Automative Products ([2012] EWPCC 38 (July 2012)), the subject matter was a security net used in estate cars between the back seat and the boot. It seems that there was no disclosure. However, unlike the previous cases, the claimant relied on two experts whilst the defendant relied on only one. The legal team for the claimant comprised a Junior Counsel instructed by a firm of patent attorneys whilst the legal team for the defendant comprised again a Junior Counsel but instructed by a firm of solicitors.  Both infringement and validity (obviousness) were in issue. The Judge held that the patent was invalid and also not infringed.  Interestingly, the Judge came to a different view on infringement as had the Dusseldorf Court on the German designation of the same European patent.

The early indications are that HHJ Birss has finally succeeded in establishing the PCC as the jurisdiction it was intended to be namely a low cost forum for SMEs to resolve patent disputes. The patent cases that have now come to trial in the PCC, however, show that the jurisdiction can also be used by larger enterprises to resolve more straightforward patent disputes where for instance disclosure is not required, the technology and legal issues are such that no more than one expert needs to be instructed by each side and as a result, the trial therefore can take place in 1 - 2 days.

Other items in the Patents Update newsletter for January 2013:

> China: Two recent Supreme Court decisions open up greater possibilities for amendment of Chinese patents

> England: The Patents Court exercises its jurisdiction to grant a pan-European declaration of non-infringement

> England: Patent litigation statistics for 2011 and 2012

> England: The Patent Box

> Germany: "Customary usage in the trade" gains importance in determining infringement in repair/reconstruction cases

> Germany: Stay of first instance infringement decisions in standard essential patent actions

> Holland: Cross-border patent litigation revival 'Solvay vs Honeywell'

> Spain: Some interesting peculiarities of Spanish Utility Models

> EU: Unitary Patent Regulation and Unified Patent Court Agreement

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