An International Guide to
Patent Case Management for Judges

9.6.4 Early case management

9.6.4.1 Case management conference

Following service of the defense (with or without a counterclaim), the claimant can make an application to the court for a case management conference (CMC). This is a hearing wherein the timetable (i.e., directions) to trial is ordered by the court if the parties cannot agree to a timetable in advance. This timetable will deal with matters such as the following:

• time for service of any further statements of case, or an order that a party respond to a request for further information;
• time for service of any notices to admit facts, which are documents requiring a party to admit facts or admit a part of the opposing party’s case. For example, the patentee might seek admissions as to whether the allegedly infringing product contains each element of the claim of the patent asserted. Suitable admissions will allow both parties to understand which elements of the claim are uncontested and which will be subject to argument at trial;
• time for the patentee to identify which of the claims of the patent it will rely upon at trial as being independently valid. This allows the court to focus only on a handful of claims at trial;
• a timetable for disclosure or time for service (or both), by the allegedly infringing party, of a product and process description (discussed in more detail below in Section 9.6.7.1);
• where a party wishes to establish any fact by experiment(s), the time for service of any notice of experiments setting out particulars of the experiments proposed to establish which facts;
• whether the parties have permission to call expert evidence and, if so, how many experts and in which field(s);
• whether a scientific adviser is to be appointed;
• timetable for the production of a technical primer or statement of agreed common general knowledge by the parties (discussed in more detail below in Section 9.6.9);
• time for the exchange of written fact evidence and expert evidence (both the first round of evidence (evidence in chief) and evidence in reply);
• the estimated length of the trial and the window within which it is to be listed; and
• the category of Patents Court judge required to hear the trial.

A typical order for directions made at a patents CMC can be found appended to the Patents Court Guide.¹¹⁷

It is often possible for the parties to agree the order for directions and ask the court to approve it on paper without a hearing. Even if this is not possible, in most cases, a large amount of the order can be agreed between the parties, and any outstanding issues are dealt with at the CMC hearing.

9.6.4.2 Time to trial and expedition

The stated ambition of the Patents Court in England and Wales is that the trial of a patent infringement claim should occur within 12 months of commencement of proceedings. In practice, the court issues a judgment at first instance within 12 to 15 months.

However, where necessary, the court can bring the issue to trial more quickly. For this to happen, one of the parties must seek an order that the proceedings be expedited. The most common situation in which this occurs is where the patentee seeks an interim injunction or, alternatively, an order for expedition on the basis that they will suffer irreparable harm if the infringement continues for 12 or more months before judgment at first instance. A straightforward way to resolve or at least mitigate the harm suffered by either party as a result of granting or not granting an interim injunction is to make the time to judgment as short as practicable. With an order for expedition, it can be the case that a trial will occur in as little as three months after the proceedings are started. This, of course, is incredibly quick and involves significantly shortening the normal timetable to trial and either partially or wholly removing certain steps in the proceedings with the permission of the court.