Bringing Evidence - Phil & Ted's v TFK

Background

TFK threatened to bring proceedings against Phil & Ted's Most Excellent Buggy Company Limited (Phil & Ted's) for patent infringement. Phil & Ted's launched proceedings for unjustified threats and revocation of the patent on the grounds of invalidity. TFK denied invalidity and counterclaimed for infringement of the patent. The patent was found to be invalid in that it was obvious over prior art.

What is interesting about this case is that it provides further understanding of the PCC rules in relation to witnesses and evidence.

The PCC deals with less complex intellectual property claims, often of a smaller monetary value than the Patents Court, and imposes a cap on damages at £500,000 (although the cap can be waived by written agreement of the parties) and a cap on legal costs of £50,000.

It is intended to be a more streamlined approach and provide an avenue for smaller companies to have access to justice, without the somewhat hefty costs that can at times be associated with High Court actions.

In order to facilitate this, the court determines at the case management conference (CMC) whether expert or fact evidence needs to be adduced at trial.

Evidence of common general knowledge

In a patent action, the parties are required to provide evidence of what was the 'common general knowledge' in the relevant field, at the time of the invention.

In this case, Phil & Ted's relied on Mr David Cocks, an industrial designer with experience of designing buggies, as their witness to give expert evidence in the case, including giving evidence about the common general knowledge in the relevant field.

TFK called Mr Whyte, who was an experienced mechanical engineering designer. However, Mr Whyte has never designed a buggy and could not provide evidence of common general knowledge. Consequently, Mr Whyte was unable to assist the court on this issue, and TFK did not produce any further evidence to support their position.As TFK were in the market, they were in a position to produce a witness to contradict the evidence of Mr Cocks, or by producing documents which undermined his views.

TFK argued that they could not produce such evidence contradicting Mr Cocks even if they wanted to because there was no permission from the court to bring factual evidence in this case.

The judge disagreed. He held that TFK had chosen to call an expert who was unable to comment on the common general knowledge. The directions at the CMC specifically provided that one of the issues about which experts would give evidence was common general knowledge. It is true that the rules make it difficult for a party to rely at trial on material for which no permission was given at the CMC, however in this case the judge held that TFK did have permission to call evidence about common general knowledge. If, after deciding to rely on Mr Whyte they then wanted to call evidence on common general knowledge through a different channel, they could, and should have raised this matter with the court. The judge commented that in this instance, it was hard for him to see how such an application could have been refused, and he did not accept that TFK could rely on the rules as an excuse for not calling evidence about common general knowledge in this case.

Comment

In order to streamline cases in the PCC, the court has strict guidelines and rules which the parties must abide by. What this case highlights however, is the degree of flexibility that the court will exercise in order to allow parties to properly argue their cases, in order to ensure the administration of justice. This flexibility comes with the caveat that it must be used. Failure to do so can be fatal as TFK discovered to their cost.