MMI Research Ltd v Cellexion Lts & Others

JurisdictionEngland & Wales
CourtChancery Division (Patents Court)
Judgment Date31 Jul 2009
Neutral Citation[2009] EWHC 1533 (Pat),[2007] EWHC 3464 (Pat),[2009] EWHC 1938 (Pat),[2009] EWHC 418 (Pat)
Docket NumberNo. HC-2006-C02649,Case No: HC 2006 C02649

[2008] EWHC 3464 (Pat)





Mr. Justice Warren

No. HC-2006-C02649

M.m.i. Research Ltd.
Cellxion Ltd. & Ors.

The Claimant did not appear and was not represented.

Mr. S. Malynicz (instructed by Edwin Coe) appeared on behalf of the 1 st—4 th Defendants.

Ms. L. Lane (instructed by Hammonds) appeared on behalf of the 5th Defendant.

(As approved by the Judge)


I have two applications by the 1 st—4 th defendants against the fifth defendant, seeking orders for an “unless” order to the effect that, unless the fifth defendant serves a defence to the counterclaim to the 1 st—4 th defendants, it shall be deemed to admit the allegations set out in the counterclaim and that judgment may accordingly be entered in default. Alternatively, that the fifth defendant should debarred from calling any evidence of witnesses contesting those allegations. The second is for further disclosure.


The evidence consists of witness statements from Ms. Powell of Edwin Coe (the 1 st—4 th defendants' solicitors), and Mr. Newman of Hammonds (the fifth defendant's solicitors).


The action started out as a patent infringement action against the 1 st—4 th defendants. The fifth defendant is a joint-proprietor of the relevant patent but did not wish to join in the action as a joint claimant. It therefore appears in the proceedings as a defendant in accordance with s.66(2) of the Patents Act 1977 and is thus not liable for costs unless it takes part in the proceedings.


The 1 st—4 th defendants have served defences to the claimant's claim and have also counterclaimed against the claimant and the fifth defendant, asserting invalidity on grounds of lack of novelty and obviousness. There are separate defences for the third defendant and the fourth defendant, who were initially separately represented. They now have the same representation.


The fifth defendant has not served a defence to the claimant's claim. No relief is sought against it and, in the light of s.66(2), there is no reason to expect it to take part in the infringement proceedings. However, it is a defendant to the counterclaim seeking revocation to which s.66(2) has no relevance. It has not served a defence, Its position initially was that it had not decided whether or not it was going to defend the counterclaim, and that was the position at the date of the consent order made by Kitchin J. which I will come to. Its position today is that it is not proposing to defend the counterclaim and does not wish to serve a defence. Its decision to that effect was communicated in a letter from Hammonds, dated 28 th December 2006. Ms. Lane, who appears on behalf of the fifth defendant, has repeated to me in unequivocal terms that the fifth defendant is not going to serve a defence.


At this point, I would refer to the order of Kitchin J. made pursuant to the claimants' application notice, dated 29 th November 2006. The order was made by consent and provided, among other things, for the service of a defence to counterclaim by 13 th December (which, of course, has not been done).


In an ordinary case against one defendant, it is possible to obtain judgment in default. However, under CPR 12.8, special provision is made about default judgments where the claim is against more than one defendant. In the present claim, the counterclaim is for revocation of the patent, a claim which clearly cannot be dealt with, as against the fifth defendant separately from the claimant. Accordingly, the case falls within CPR 12.8(2)(b), so that court will not enter default judgment against the fifth defendant, but will deal with any application (if one is made) at the same time as it disposes of the claim against the claimant.


However, the 1 st—4 th defendants want to be sure that the fifth defendant is unable to attend the trial and require them to prove their case against it. Now, if the fifth defendant were to serve a defence, there would be matters on which it could only properly plead a non-admission, those matters not being within its knowledge. But equally, there would be matters which are within its knowledge and in relation to which it should plead properly, with either an admission or a positive case to support a denial. Hammonds' position indicates that the 1 st—4 th defendants need not really have any concern on that score. In their letter dated 28 th December 2006 they also say that, by not contesting the counterclaim, the fifth defendant:

“will not be putting your clients to proof in respect of any of the matters pertinent to that claim”.


It is clearly a matter for the fifth defendant whether it serves a defence or not. But I do think that the 1 st—4 th defendants are entitled to the comfort which would be provided by the alternative second part of the draft order which they seek in the first application. Since the fifth defendant has made it clear that it is not going to serve a defence, I think that the appropriate order to make is one debarring the fifth defendant from adducing any evidence or calling any witnesses contesting any of the allegations in the counterclaim.


The more important application is the disclosure application. Mr. Malynicz, who appears for the 1 st—4 th defendants, refers me to the Grounds of Invalidity, which refer to a number of prior disclosures which would invalidate the patent or novelty and/or obviousness grounds. The priority date of the patent was, I understand, some time in March 1999.


There are two sets of Grounds of Invalidity because, as I have mentioned, at the early stage, the 1 st—3 rd defendants were separately represented from the fourth defendant. I will need to look at each set in order to address the submissions which have been made. But, before I do so, I should mention some of the procedural provisions and the case law in relation to discovery or disclosure in patent actions.


The starting point, of course, is CPR 31 and the well-known requirements of 31.6 in relation to standard disclosure, in particular 31.6(b). Disclosure is directed to the issues between the parties. In this context, I mention (to get it out of the way) that the fifth defendant's obligations to give disclosure are not affected by its decision not to serve a defence. It may be that there are now no issues as between it and the 1 st—4 th defendants which need to be resolved by the court and, therefore, no need for disclosure to be given in order to resolve any issues as between those parties. But the issues between the claimant and the 1 st—4 th defendants are hotly contested. Those issues concern, among many other matters, prior disclosure by the fifth defendant, which would show that the patent was invalid. The fifth defendant, therefore, remains under its ordinary disclosure obligations. This does not appear to be disputed, and was recognised by Hammonds in their letter dated 8 th February to Edwin Coe. In that letter they say in para.2:

“Our client is, of course, fully aware of the disclosure order which was made with its consent, and agrees that all issues are open for the purposes of disclosure as they all remain at issue between your client and MMI [that is the claimant]”.


There is a duty to search under CPR 31.7. It is to be noted that:

“Where a party has not searched for a category or class of document on the grounds that to do so would be unreasonable, he must state this in his disclosure statement and identify the category”.

The procedure for standard disclosure is set out in CPR 31.10 requiring, in particular, the making of a disclosure statement. This must set out the extent of the search.


The pleadings, of course, play an important part in the disclosure exercise because it is only through the pleadings that the issues in the case to which disclosure is directed can be identified. In an ordinary case, a claimant may find that he is unable properly to particularise his case prior to disclosure being given, only being able to specify the nature of his case in broad terms. There is nothing wrong with that, although where the pleading is not well particularised, the claimant may be more open to accusations of “fishing” than if he has a focused pleading.


Special provision is made in relation to both pleadings and disclosure in patent actions. These special provisions are found in the practice direction —Patents and other Intellectual Property Claims, to CPR 63. CPR 63.8 expressly provides that “Part 31 (disclosure) is modified to the extent set out in the practice direction”.


Dealing first with pleadings, para.11.3(1) of the practice direction provides that, where the Grounds of Invalidity include an allegation based on lack of novelty or inventive step:

“The particulars must specify such details of the matter in the state of art relied on, as set out in para.11.4”.

The details required in 11.4 are:

“(1) In the case of the matter or a design made available to the public by written description the date on which and the means by which it was so made available, unless that is clear from the face of the matter: and

“(2) in the case of matter or a design made available to the public by use -

“(a) the date or dates of such use;

“(b) the name of all persons making such use;

“(c) any written material which identifies such use;

“(d) the existence and location of any apparatus employed in such use; and

“(e) all facts and matters relied on to establish that such matter was made available to the public”.


In the decision of the Court of Appeal in Nichia Corporation v. Argos Ltd. [2007] E.W.C.A. Civ 741, Jacob L.J. carried out...

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