Emtelle v Hexatronic: How much detail is required in patent pleadings?
Traditionally, the statements of case (pleadings) in patent matters before the English Patents Court have been relatively bare. Broadly, in any infringement claim, it was sufficient to identify the patent, infringing product and an act of infringement (for example, manufacture, import or sale). In any revocation action, the grounds of invalidity needed to be asserted (for example, anticipation or obviousness) and the relevant prior art identified. In particular, in both instances, no claim charts were necessary. This contrasted with other jurisdictions, such as Germany, where the pleadings are front-loaded.
This had the advantage of allowing the parties to commence proceedings quickly (potentially at modest cost) and to be flexible enough to tailor their case as the evidence (for example, a product and process description and expert evidence) was developed. It had the disadvantage, however, that in some instances the parties or evidence could be at cross-purposes, necessitating further argument and evidence in due course (potentially at increased cost). It also militated against early settlement of the case.
In 2009, the reformed English Patents County Court (now the Intellectual Property Enterprise Court), a court directed to small to medium sized companies and less complex claims, introduced rules obliging parties to further particularise their statements of case, usually in the form of a claim chart. Whether as a result or by coincidence, a similar practice has developed before the English Patents Court, in the form of Statements of Case on Infringement and Validity.
In Emtelle v Hexatronic, the English Patents Court has explored how much detail is required in the supplemental statements. Hexatronic had filed a Statement of Case on Validity which included a claim chart mapping how the prior art anticipated or rendered obvious the integers of the relevant claims of the patents in suit. Where prior art was cited, the relevant section of the document was specified.
While the form and substance of the application was the subject of some debate, ultimately Emtelle argued that the Statement of Case was insufficient. In particular, Emtelle asserted that, in the circumstances of the case, more was needed than merely the references by paragraph, page, column and/or line in the document. This was because the items of prior art contained various alternative disclosures. Emtelle said it was not clear which particular alternatives, or more significantly, which particular combination or combinations of alternatives, Hexatronic proposed to use as a starting point for an obviousness case. It asserted that this information was necessary in order to be able to instruct an expert as well as conduct any experiments.
The court declined the application. Mr Justice Mann, giving the judgment, reasoned: “I accept that patent litigation is not immune from particularisation at an earlier stage in a case which merits it. I accept that I could order it. I accept that other courts have ordered it, and I accept that in other cases parties have agreed to provide it. If the case is appropriate to have it, and if an appropriate case is made for it, then the court could undoubtedly order it. I should also say that I am sympathetic to the desire to have earlier particularisation of at least certain aspects of patent cases than has traditionally been the case. However, I do not consider that this case, being where it now is, is one in which the particularisation [requested by Emtelle] should be provided ...
If [Emtelle] really is going to make a case based on particular items of prior art requiring a particular degree of particularisation, I cannot see any realistic alternative to his actually making that case by flagging it up clearly in the supporting evidence in support of the application notice, or conceivably in the application notice itself, so that the other side has notice of the detail of the case advanced and so the court can, if it needs to do so, form a view as to whether, first of all, it can be said the particularisation will be useful and second, whether it needs to take place at this stage ...
I do not consider that [Emtelle] has made a particularly compelling case about the need to have the material before experiments. [It] has merely floated the possibility of the need for experiments on validity, and has not made a sufficiently positive case to require the sort of deflection from the CMC train of events which would be necessary in order to accede to his application on this basis. Again, if [it] was going to shift [its] position on experiments that required more evidence than [it] actually put in, in this case.”
The judgment acknowledges the ongoing trend for further particularisation in Statements of Case. However, the strong indication here is that the mere principle is not enough and the party requesting further particulars will need to be prepared to show the benefit of them.