A reminder from the IPEC that it is essential for the parties to identify all facts and arguments in their statements of case in advance of the CMC.
The Intellectual Property Enterprise Court (IPEC) offers huge advantages to rights holders by offering a less costly and less complex alternative to High Court proceedings. However, it does come with some downsides. The most common issues discussed when deciding where to issue a claim are the cap on costs orders (no more than £50,000 can be recovered at the liability stage in the IPEC) and the fact that the costs of bringing proceedings can often be front loaded. Unlike traditional pleadings, statements of case usually stand as evidence at trial in the IPEC and need to be full, in that they need to identify all arguments to be advanced. The IPEC Guide makes clear that a key purpose of this requirement is to facilitate the conduct of the case management conference (CMC) on an issue by issue basis: 'The court and the parties need to know what the issues are going to be in sufficient detail for that process to take place. Therefore the facts and arguments that all parties intend to present at trial should have been finalised by the time of the CMC and set out in the statements of case.'
The recent decision in Marflow Engineering Limited v Casellie Limited (IP-2017-000177) serves as a reminder of the importance of this principle.
The claimant applied for permission to re-amend its statements of case in the context of a patent infringement claim concerning the method of installing a fluid-using appliance (such as a shower), which involved a mounting plate through which pipes would be secured. The amendment was not a minor one. It added a new line of argument that the prior art relied upon by the defendant in its invalidity attack did not form part of the common general knowledge in the UK. If allowed, it would require supplemental expert evidence. As the CMC had already taken place (and the Court rejected the idea that the hearing of the application to amend the pleadings should be treated as a new CMC), the Court had to consider whether there were 'exceptional circumstances' which justified the application being allowed. Amendments were discouraged by the IPEC rules and, unlike in the High Court, the IPEC costs regime meant that it may not be possible to sufficiently compensate the opposing party by making an order as to costs.
The applicant needed to satisfy the Court that: (a) the amended case could not, with reasonable diligence, have been advanced at the CMC; and (b) the amended case was of such a nature that it was likely to have a significant influence on the outcome of the trial. The applicant failed. A 'key figure' on the claimant’s side was always aware of the issue now being raised (therefore the proposed amendment could and should have been raised by the time of the CMC) and the risk of the trial going ahead on a false basis was considered to be low.
This case provides a useful reminder of the need to sufficiently think through a case prior to the CMC stage when issuing proceedings in the IPEC.