IP litigation – processes, procedures and preparation
January 2016 | SPECIAL REPORT: INTELLECTUAL PROPERTY
Financier Worldwide Magazine
Intellectual property litigation is changing. In common with the rest of the business world, litigation is becoming more digitised and this is enabling smaller teams to conduct litigation as effectively as large teams, but at lower cost.
Litigation in the UK has historically been expensive due to certain features of common law litigation that have been deemed indispensable. These include, for example, disclosure, experiments, detailed expert reports prepared in contemplation of cross examination, and trial and the attendant logistics and time cost of preparing paper bundles.
The Intellectual Property Enterprise Court has addressed some of these issues by reducing the use of disclosure, experiments and cross examination, and holding one day trials, but the trade-off has been that the winner can recover only £50,000 in costs, and can claim damages of only £500,000. What is a litigant to do if it wants to recover more of its costs, and to claim higher damages but feels that there is perhaps some fat to be cut from the costs of a typical patent litigation case? We consider below where improvements can be made.
Disclosure can be an expensive exercise. First, a significant amount of management and employee time will be spent retrieving documents from archives and other repositories. Traditionally, the litigation team has then spent time reviewing each of the documents in paper form, firstly to identify those relevant to points in the case and secondly to establish whether any of those documents are privileged or confidential.
However, it is now increasingly common for documents to be stored electronically. This greatly facilitates document retrieval. It also means that the first cut of identifying documents relevant to points in the case can be performed electronically, and there are a number of excellent specialists who can perform an initial de-duplication and filter. Already, the exercise will have cost significantly less than the old paper based process.
The next stage of the disclosure exercise is for suitably qualified lawyers to review the documents for privilege and confidentiality, and this is where costs can be run up very quickly by a team of mid-level associates. A small team, lacking that internal resource, can easily bring in very competitively priced external resource to assist as and when needed.
A large amount of time and cost in patent litigation is incurred in interviewing suitable expert witnesses and then assisting the expert as they prepare their report. Arnold J in Medimmune Ltd vs. Novartis Pharmaceuticals UK Ltd acknowledged that preparing expert reports involved “a steep learning curve” on the part of the expert and the litigation team. Patent attorneys and patent attorney litigators have a technical background which will give them a head start in understanding the technology, meaning that they will spend less time and money interviewing experts, learning about the technology and ultimately assisting the expert to draft his or her report.
Experiments can often be crucial in patent litigation, and litigants should not be discouraged from using them due to cost pressures. However, they can be expensive because it is best to design and then conduct the initial experiments in conjunction with the expert witness retained by the party, and then it is necessary to repeat them in the presence of the opposition together with the expert (again) and the legal counsel.
The more technical expertise a litigation team has, the quicker and less costly the design process and the more valuable the results and repeats.
Paper trial bundles
Preparing and maintaining paper trial bundles takes a very large amount of trainee or paralegal time, but paper bundles, like paper disclosure, are being replaced by electronic bundles which are more efficient and cost a fraction of the price. Each party to the litigation, the judge and the witness can each have access to a laptop with a firewalled set of electronic bundles on which they can make notes, share comments around their team and link text to sections of transcript. Even better, these electronic bundles and a live transcript can be accessible anywhere in the world. This permits client representatives who for whatever reason could not attend the trial in person to attend in virtual reality.
The resource-heavy litigation model is becoming obsolete. As the world becomes more digitised, smaller core teams with increased focus on collaboration between patent attorney litigators and solicitors are more able to conduct patent litigation effectively and at significantly lower cost. This already applies in the High Court and the Intellectual Property Enterprise Court, and it will apply to an even greater extent in the imminent Unified Patent Court.
Tom Carver and Ravi Srinivasan are partners at J A Kemp. Mr Carver can be contacted on +44 (0)203 077 8600 or by email: firstname.lastname@example.org. Mr Srinivasan can be contacted on +44 (0)203 077 8600 or by email: email@example.com.
© Financier Worldwide
Tom Carver and Ravi Srinivasan
J A Kemp