England and Wales High Court (Patents Court) Decisions

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Cite as: [2008] EWHC 1385 (Pat)

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		Neutral Citation Number: [2008] EWHC 1385 (Pat)
		Case No: HC 07 C 02572

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT

Royal Courts of Justice
Strand, London, WC2A 2LL

11th June 2008

B e f o r e :

MR. JUSTICE FLOYD
____________________

Between:

	W. L. GORE & ASSOCIATES LTD.	Claimant
	- and -
	GEOX SPA	Defendant

____________________

Digital Transcription by Marten Walsh Cherer Ltd.,
6th Floor, 12-14 New Fetter Lane, London EC4A 1AG
Telephone No: 020 7936 6000. Fax No: 020 7427 0093

____________________

MISS L. LANE (instructed by Taylor Wessing) for the Claimant/Respondent.
____________________

HTML VERSION OF JUDGMENT
____________________

MR. JUSTICE FLOYD :

This is an application for further directions in an action for a declaration of non-infringement and revocation of four patents which stand in the name of the Defendant, Geox. The patents all relate to shoes having certain features incorporating microporous or water permeating membranes of one kind or another.

The action is currently fixed to come on for trial before me in September 2008. The reason that the trial is fixed to come on in the long vacation in that way is because the Claimant ("Gore") applied for expedition of the trial because it required a degree of commercial certainty in relation to a proposed licensing programme of its own technology for shoes in this general category, and it required it as soon as possible. An agreed trial date in November was accordingly not going to provide that certainty sufficiently early, and ultimately the Court of Appeal gave directions that the trial should come on at the earlier date. The principal reason that that had become possible was because it had become clear that arrangements could be made to hear this case in September without displacing the claims of other litigants, something which had not been made clear to the Judge of first instance.

The action involves four patents. However, the position now is that acknowledgements of non-infringement have been given in relation to the Gore process in respect of two of those patents which terminate with the numerals 904 and 006. The dispute which is before me today concerns whether it is possible in the time available in September (which I should add is a period strictly limited to five days) to hear all the issues in the action. Geox contend that the action as presently constituted with all the issues in it would occupy the time of the court for some seven to eight days. Gore contend that it is perfectly possible to hear all the issues in the action in five days. Accordingly, what Geox seek is an order hiving off the trial of 904 and 006 to be heard at a separate date. This, they say, will enable justice to be done in relation to the other two patents in the five days available, and at the same time avoid any prejudice to Geox by ensuring that the cases on which there is an outstanding question of infringement are decided on the timescale that Geox have said is necessary.

Mr. Moody-Stuart, who appears on behalf of Geox, has said, and I agree, that there are really three issues here for me to decide: (1) which of the two estimates is correct; (2) assuming that I order the trial to go ahead in a five day slot and it in fact is not possible to hear it within eight days, what the consequences of that procedurally are likely to be; and, (3) what is the commercial prejudice to each party?

I turn, therefore, to the question of likely estimates. This, of course, is something of an inexact science, particularly for a judge who has, thus far at least, had limited exposure to the issues in the case. I have, however, had it pointed out to me that there four patents, fourteen allegedly independently valid claims, seven pieces of prior art, and, now, an application to amend one of the patents conditionally on a finding of invalidity to add to the foregoing.

The technology involved is undoubtedly not complicated. However, that can often be a somewhat unsure guide to how long a case will take. Mr. Moody-Stuart estimates that his side at least will require some two days to cross-examine what is expected to be the sole expert witness for the other side. It is probably fair to assume that if he did that, then the other side would follow suit with his expert. It seems to me that those estimates are somewhat generous to allow in a case of this nature. Without now deciding the matter, I would be inclined to give directions that cross-examination take place in this particular trial on a somewhat fore-shortened basis. But, adding to that, with what he says is a necessity for some half a day in opening and one and a half to two days in closing, he reaches his extended estimate.

Miss Lane, on the other hand, says that she expects that both experts would be cross-examined in two to two and a half days, making the five day estimate more realistic.

The problem I see is that even on Miss Lane's timetable there is not sufficient flexibility to allow for the perhaps less co-operative expert or other unforeseen circumstances which might cause the trial to last more than five days. I cannot be sure in this case that that window is adequate to do justice to what are said to be important patents.

To turn to Mr. Moody-Stuart's second point, if it were to emerge that the action was not going to be completed within a five day slot, and that, say, on the Wednesday it emerged that more time was going to be needed in order to complete final speeches, the consequence might be that it would be possible to finish the evidence and then to have a further hearing at which the parties could make final oral submissions after having reduced their final speeches to writing. The difficulty with that, it seems to me, is that the next available occasion on which I will be available is 1^stOctober, and I have no idea at the moment whether my existing commitments would allow me to hear the adjourned final speeches at that time. In those circumstances it might be quite a long time before the case itself was completed. Even if - as at least one member of the Court of Appeal suggested - I could at that stage give an indication of what my final decision was likely to be (something which I place no pressure on myself at the moment to do), the date is becoming somewhat later than Gore themselves have consistently argued would be convenient to their business.

It seems to me therefore, overall, that there are difficulties, and there would be serious procedural consequences if I were to decide that I preferred Miss Lane's estimate, and yet the action then was not capable of being completed within five days.

I turn to Mr. Moody-Stuart's third point: What is the commercial prejudice to each side? Geox say that their prejudice is, or might be, that the hearing was not adequate to do justice to their case. I have to say that I regard it as somewhat troubling that it is thought that a patent action of this relatively straightforward nature cannot be adequately dealt with within five days. However, as I have indicated, there must at least be a risk that unless very stringent case management decisions are taken, the case will overrun into territory where there is no prospect to do anything but to adjourn.

What is the prejudice to Gore if the two patents of which an acknowledgement of infringement has already been given are hived off? Miss Lane says that the patents are still there. That is entirely correct. But, it does not seem to me, once their commercial process has been given the all clear, as it has, that there remains any great threat to them or their respective licensees that the patents merely exist. The suggestion that there might be some alternative process which they might wish to use which might run into conflict with those patents is, it seems to me, only speculation.

The other item of prejudice relied on by Miss Lane is the fact that to deal with the two pairs of patents in two tranches would undoubtedly give rise to additional costs. There is, it seems to me, some force in that, particularly as the CPR encourages the court to make directions where it can to deal with as many aspects of the case as possible on the same occasion (see CPR 1.4(2)(i)).

I have to balance all those procedural and commercial factors together. I have come to the conclusion that the appropriate course to take is to accede to Mr. Moody-Stuart's application and order that the 094 and 006 patents should be adjourned to be dealt with at a separate hearing. That course does not, it seems to me, cause prejudice to Gore of sufficient magnitude that it can be said to be outweighed by the prejudice to Geox if they are not able to present their case in the way that they consider appropriate. For the reasons I have rehearsed, perhaps now at too great a length in the course of this judgment, I will accede to that application.