Posted: January 18th, 2016
Electromagnetic Geoservices ASA v Petroleum Geo-Services ASA and Others, High Court of England and Wales (Birss J), London, UK, 13 January 2016, Neutral Citation Number:  EWHC 27 (Pat)
This was an interlocutory case management hearing before Mr Justice Birss in a case concerning allegations of infringement of EP (UK) 1 256 019, a patent which has previously been upheld as valid in earlier Court proceedings.
There were four issues dealt with by Birss J.
Notice of Experiments
Two Notices of Experiments had been served, but it was not clear to the judge reading them what part these experiments or the facts they demonstrated were expected to play in the proceedings. The parties apparently expected that the most important “fact to be admitted” was that particular results occurred when a computer programme was run. Birss J disagreed, saying that the facts to be admitted should include all the steps to this ultimate fact – that the results occurred – so that the court would know why these facts were important to the case.
Birss J also was clear that the party served with a Notice of Experiments must respond to it, either admitting the evidence, or to co-ordinate a “repeat” of the experiment (so-called because it is assumed that the party wishing to adduce the evidence will already have conducted the experiment once to prepare the Notice). It is not open to a party simply to ignore the Notice.
Birss J ruled that the party serving the Notice could rely on experiments to prove the facts in question, that the other party should respond to the Notice, and that repeats of the experiments could be conducted if required.
The previous trial at first instance concerning the patent had been heard by Mann J who ordinarily does not hear cases given the complexity rating of Category 4/5. Since the patent involves complex technical subject matter, a scientific adviser had been appointed to assist Mann J on that occasion.
The present case had been listed to be heard before a Category 4/5 patent judge (the most experienced and technically qualified patent judges). Such judges are well-used to dealing with highly complicated technical and scientific matters and Birss J commented that it would only be on the rarest of occasions where they are unable (with appropriate preparation) to deal with most technical subject matter sitting alone.
Birss J therefore ordered that given the case would be heard by a Category 4/5 patent judge, no scientific adviser would be required and that instead the judge hearing the case ought to be given a non-controversial introductory course in the subject matter, arranged by the parties.
Witness’ Evidence – Cross Examination of Hearsay
The claimant had served, under the Civil Evidence Act, a notice, wishing to introduce part of the witness statement given by a former employee (who was one of the inventors) at the previous trial, a Dr Eidesmo. The respondent wished to have Dr Eidesmo called so that he could be cross-examined on the whole of his witness statement, including those parts the claimant did not rely upon.
Birss J only gave permission for Dr Eidesmo to be cross-examined on the basis of the evidence the claimant wished to rely on. To do otherwise would, in effect, be to allow the respondent to introduce further evidence, and possibly further expert evidence, without the proper procedures being followed.
Permission to Amend the Pleadings
The claimant wished to amend its pleadings to extend the allegation of infringement to cases which took place outside the UK, but where the deliverables were offered for disposal in the UK. The respondent argued that it was too late in the timetable to amend pleadings.
Birss J permitted the amendment, as the extra matters which would be included could be dealt with at the same trial without prejudicing the predicted length of the trial. As with any amendment, there will be issues as to costs, but it is favourable, if the trial date can be kept, for all the issues to be heard together.
Read the judgment here.
Head note: Nicholas Fox, Simmons & Simmons, LLP