Molnlycke Health Care AB v Brightwake Ltd
| Jurisdiction | England & Wales |
| Judge | Judge Birss |
| Judgment Date | 26 January 2011 |
| Neutral Citation | [2011] EWHC 140 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HC09 C03308 |
| Date | 26 January 2011 |
[2011] EWHC 140 (Pat)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
PATENTS COURT
St. Dunstan's House
133–137 Fetter Lane
London EC4A 1HD
His Honour Judge Birss QC
(Sitting as a Judge of the High Court)
Case No: HC09 C03308
Mr. Iain Purvis QC and Dr. Anna Edwards-Stuart (instructed by Messrs. Mayer Brown International LLP) appeared for the Claimant.
Dr. Justin Turner QC and Mr. Miles Copeland (instructed by Messrs. Wragge & Co. (UK) LLP) appeared for the Defendant.
I have before me an application to deal with what are said to be late experiments. The context in which this arises is as follows.
The rules applicable to patent actions, which are in Practice Direction 63, part 7.1, provide as follows:
"A party seeking to establish any fact by experimental proof conducted for the purpose of litigation must, at least 21 days before service of the application notice for directions under paragraph 7.3, or within such other time as the court may direct, serve on all parties a notice —
(1) stating the facts which the party seeks to establish; and
(2) giving full particulars of the experiments proposed to establish them."
Then there is a further part of the rules.
The rule uses the word "must". It is mandatory.
Two cases have a bearing on the issue that arises before me. The first is Consafe v Emtunga [1999] RPC 154. In that case Pumfrey J was dealing with the question of what an experiment was. He held that a finite element analysis was an experiment. At paragraph 16 of his judgment on page 62 he noted that because the finite element analysis required an exercise in judgment, it was an experiment and notice should have been given to enable the party on the other side to assess the analysis and either criticise it or accept it. He also cited the judgment of Laddie J in Electrolux v Black & Decker [1996] FSR 595. The extract cited by Pumfrey J includes a well known passage by Laddie J which is at line 30 of the report of Consafe. The predecessor rule in the Rules of the Supreme Court is in the same terms and is mandatory, not permissive. Such experiments will not be admissible in the absence of a notice unless in the special circumstances the court exercises its discretion to allow them.
The other relevant case is Monsanto v Cargill [2008] FSR 7, 153. Here Pumfrey J excluded certain experiments. Having found in paragraph 103 that procedurally there was prejudice to the party who was faced with the experiments which were not in accordance with the rules in the circumstances arising before him, in paragraphs 104 and 105 of his judgment he said this:
"I am in no doubt that there can be experimental evidence which is straightforward, and in respect of which the court will not make orders for repetition and inspection without very good reason. It may well be that it will wait to see good evidence, or a repetition, by the other party that throws doubt upon the result obtained before repetition is ordered. Normally, though, I consider that parties to litigation of this degree of complexity are entitled to inspect a repetition and take samples before the experiment may be relied on against them. While one may entertain the forensic conviction that there can be no answer to a particular experiment, they should have every opportunity of satisfying themselves of that fact. This is not to encourage experimental evidence: it is to ensure that experimental evidence deployed in court has the additional strength which comes from providing the other side with every opportunity to test it.
I am particularly anxious that the regime for managing experimental evidence provided by the rules is not weakened. There is nothing worse than a poorly documented, unrepeated experiment coming into proceedings at a late stage, as anyone who has worked in the EPO will attest. In my view experimental evidence should be kept to a minimum, and that minimum should consist of inspected experiments. Admission of late, uninspected experiments does nobody any favours, unless perhaps to introduce an element of surprise which I am equally anxious should be eliminated so far as possible."
An extract from the decision of Kitchin J in Novartis v Johnson & Johnson on 10th July 2009 was also cited before me. Since in that case the question of whether transmission electron micrographs were or were not experiments did not arise because a notice had been served, it does not seem to me that that judgment is of assistance on this point.
The order for directions contained a regime dealing with experiments. It was an order of Arnold J dated 16th February 2010 and provided:
"Where a party desires to establish any fact by experimental proof including an experiment conducted for the purposes of litigation or otherwise not being an experiment conducted in the normal course of research, that party shall on or before 15th July 2010 serve on the other party a notice stating the facts which it desires to establish and giving full particulars for the experiments proposed to establish them."
There the word "shall" is used instead of "must". It is absolutely clear that the direction was mandatory.
Also paragraph 12 of the order provided under the heading 'non-compliance':
"Where a party fails to comply with the directions relating to experiments and written evidence, it shall not be entitled to adduce evidence to which such directions relate without the leave of the court."
Notable there is the reference expressly to experiments.
In accordance with the directions a notice of experiments or notices were served in July and no party took any point as to whether they were outside the directions at the time that happened.
The next stage is September of 2010. On 24th September 2010, Mayer Brown (the solicitors for the claimant) wrote to Messrs Wragge & Co. (the solicitors for the defendant) and with the letter included what they describe as an "electron micrograph photograph". The letter ends with the sentence: "If you require any further assistance interpreting the enclosed photograph, please let us know."
At that stage the point, as I understand it, was that the claimant was contending that what one may or may not be able to discern from the electron micrograph was inconsistent with the Product Description in the state that it was at that time. The letter I have just referred to makes this point. It was being said that what the photograph showed suggested that the Product Description was inaccurate or incomplete in some way.
On 12th October Wragge & Co. replied and said, referring to the product description:
"As to our client's product description, you state you have serious concerns about this: in particular you doubt that Episil" – [I interpolate that is the product in question]— "contains MBPU" – [and that is melt blown polyurethane]. "You arrive at this conclusion on the basis of electron micrographs you have taken, the details of which our client knows little about."
They then continue:
"As to your electron micrographs, we really cannot comment further. These micrographs record the result of experiments which have not been subject to a notice of experiments and which have not been subject to witnessed repetitions. Further, our client does not employ an in-house electron microscopist who is able to advise us on the interpretation of these images, the manner in which they are recorded or the manner in which the samples were prepared.
We seek your confirmation that if you are intending to rely on these micrographs at trial, you will be serving a notice of experiments in respect of them by 19th October."
No notice of experiments was served.
On 14th October Mayer Brown replied, dealing with this issue. They explained the point they were making in relation to the photographs. They said the electron micrographs showed that no fibrous material akin to melt blown polyurethane was visible in the micrograph. This was part of what appeared to be inconsistent with the Product Description. They concluded at page 3 of the letter:
"Lastly, we note your comments regarding your client's lack of in-house expertise relating to the actual micrographs. This lack of expertise is irrelevant; whilst it was by looking at the electron micrographs (which are photographs, not experiments) that we and our client were able to see that your client's product description does not appear to be accurate and complete, your client must know (or be able to find out) how its products are manufactured and to produce an accurate and complete product description."
On 25th October the defendant provided an Amended Product Description. Sure enough, it showed that the process that the defendant uses had been altered over time — nothing wrong with that, I interpolate — and it described an earlier process which was not the one that was in the original Product Description. This earlier one involved a degree of heating of the product in question. That can be seen in a letter of 25th October 2010.
At that stage, it became clear that in this case there are two forms of the product alleged to infringe, what we might call the "old form" and the "new form". The new form was the form that the defendant thought the case was about until this point in time, when it became clear that there were two kinds of product. Whether the difference is material or not of course is one of the issues that we will need to address. That was 25th October.
On 9th November, Messrs...
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Mölnlycke Health Care AB v Brightwake Ltd (Trading as Advancis Medical)
...I admitted in evidence in my judgment on the morning of trial ( Mölnlycke Health Care AB v Brightwake Ltd (t/a Advancis Medical) [2011] EWHC 140 (Pat)). A notice should have been served but on the other hand Brightwake had not engaged with the question of whether the old products infringed ......
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...Notice. That maintains some discipline in the proceedings and mitigates or avoids the problem which arose in Molnlycke v Brightwake [2011] EWHC 140 (Pat) in which a party wanted to rely at trial on an electron micrograph which had been produced for one purpose for a very different purpose. ......