Innocent Pilate, director of IPOff, set off on six weeks holiday almost as soon as Cautious Co had served proceedings on IPOff for patent and design infringement. IPOff is blithely unaware that Cautious Co is considering requesting judgment in default against it, but IPOff’s solicitor is now getting worried about nonchalant IPOff preparing its defence:
“CONFIDENTIAL AND PRIVILEGED
We wish Innocent a pleasant continuing holiday.Dear Innocent, thank you for your cryptic email and I am glad you are enjoying some sunny relaxation. I am about to spoil that. As you know your defence is due 42 days after service of the Particulars of Claim. We do not have time to prepare that now – your being away makes that worse – so I will have to make an application for an extension of time for service of the defence. We are required to make it as soon as possible, and now is quite late enough. We will ask Cautious first but an application still has to be made to the PCC. I can try and recover some costs, but you are still going to be out of pocket on this.
Turning to the defence, I propose to address that in several parts. I will mention the patent issues in this email.
Your defences are that you do not infringe and that the patent is invalid. On infringement, I take it you agree that you have made the sales and other supplies which are mentioned; your issue is that your software is not remotely like that in the patent.
Please provide a description of your product and how it works. The Particulars of Claim (further copy attached) contain a table, as suggested by the PCC User Guide, with an element by element analysis of your product compared with the elements of each claim. Go through those and explain, on an element by element basis whether your software has that element or not, and how you reach that conclusion – if you think that the element in the claim means something different from what Cautious are suggesting, make that clear. We can discuss it in more detail when you have done that. But just a warning, if I have to do masses of drudge, it will cost you more, so the more you do the better.
Then invalidity is much the same. We have found a couple of pieces of prior art. It would have been useful if you could have helped us on this, and they are not very brilliant bits. Please go through the prior art and prepare a table like the one in the particulars of claim and compare each one, on an element by element basis with the elements in the claim. Use the same elements as in the table in the Particulars of Claim, except that if that seems not to make the comparison easy, do choose your element differently. Again if I have to work on it, it will cost you more.
I am sure there will be gaps where you find the prior art does not contain all the elements of the claim. We need to turn it into CONCISE FACTS AND ARGUMENTS, so the more you do the better. I will deal with that later.
I look forward to hearing from you and hope you go on enjoying the sunshine, while it is freezing cold here.”
Readers will note that, in this case, the Particulars of Claim included a statement that the Practice Direction on Pre-action conduct had been complied with so that the time limit for the defence is 42 days (whether or not Practice Direction has in fact been complied with) (CPR 63.22(2) and (3)). Time can be extended, but only on application to the court and “for good reasons” (CPR 63.22(6)). (The same incidentally applies to the 28 day time limit for filing a reply to a defence and 14 day time limit for filing the reply to a defence to a counterclaim). The User Guide (currently being prepared) says that the application must be made in good time – ie a reasonable time before expiry. The rules which apply to applications are CPR 23 unless amended by CPR 63.25. The application does not apparently have to be in any special form – simply a request (CPR 23.1), should be made to the PCC (CPR 23.2(1), and the application notice filed with the PCC (CPR 23.3(1)), and a copy served on the other party (CPR 23.4). It must state that an extension of time is sought and set out (the good) reasons for the extension. In this case both the intervening holiday period and, if really the case, the fact that there has been non-compliance with the Pre-action practice direction or little compliance could be reasons. It is sensible to ask the other party first here, so that if the parties agree that is clear to the Court.
The other party must file a response, if they need to, within 5 days of the notice being served on them (CPR 63.25(2)), and in general the PCC will deal with the application without a hearing (CPR 63.25(3)).
In relation to the Defence, CPR 63 and PD 63 provide details of what should be included. It must set out all facts and arguments on which the party relies (CPR 63.20(1)), and, as with all statements of case, must have a statement of truth signed by a person having actual knowledge of all the facts alleged (CPR 63.21). Unlike the Patents Court, the grounds of invalidity must be included in the Defence (PD63 28.1), and the guidance is going to invite parties to submit a “claims table” to assist in analysing the differences etc.