Kingspan Insulation Ltd & Anor v Xtratherm UK Ltd

The first question which I have to determine in this Case Management Conference in this case is the date for response to a Notice to Admit Facts which has been served by the claimant.

This is patent action in which a patentee sues for infringement in relation to a product which is, in substance, an insulating foam material used in the construction industry. The patent, putting it shortly, relates to a product and a process for constructing it in which the product has a phenolic insulating foam body with facers on each side, the facers being a gas impermeable material which is, in fact, perforated. This is said to have various advantages which I do not need to go into.

The defendants are a company within a group which manufactures and distributes a material which is said to infringe. The defendants deny infringement and counterclaim for revocation of the patent on the grounds of obviousness and insufficiency.

In the run-up to the litigation, the claimant's solicitors wrote to the defendants claiming infringement and on 14th December 2012, they received a reply from O'Connor Intellectual Property Limited, whom I understand to be the defendants' Irish patent agents or attorneys, in which infringement was denied and, so far as is relevant to this patent, one ground for denying infringement only was set out, which is that the facer material and the defendants' product was not gas impermeable.

That letter, of course, does not bind the defendants in terms of other bases on which the infringement might not be said to have occurred, but that one issue has been on the table since that time and no other clear single ground for disputing infringement has thus far been put forward. The pleadings in this case are in the usual, fairly uninformative, patent litigation form.

Proceedings were issued on 20th March and served on the 25th March. They have got as far as the Reply and Defence to Counterclaim. On 24th June, the claimant served a Notice to Admit Facts, and that is the notice which is the subject of the aspect of the dispute with which I am now dealing.

What it essentially does is to take each of the integers from claim 1 of the patent in suit in turn and ask whether it is admitted that that integer is present in the allegedly infringing products of the defendants.

The submission of Mr. Acland QC, who appears for the claimant, is that those questions cannot be difficult to answer, at least in the main, because he says --but he would --that the answer must be obvious to the defendants. I give a flavour as follows: under question No. 2, the following admissions are invited -whether:

9. Those invitations demonstrate what Mr. Acland says is the relatively straightforward nature of the invitation or notice as a whole and as demonstrating that a lot of the invitations do not require the participation of an expert, contrary to the submissions of Ms. Berkeley, who appears to for the defendants.

There is no dispute between the parties now as to whether or not this Notice to Admit Facts should be responded to, notwithstanding the fact that it appears, at first blush, that the answers to these questions, or most of them, ought to appear in the product and process description which it is accepted the defendants will provide. The only question is one of timing. Originally, Ms. Berkeley's client's case was that the response to the Notice to Admit should be given at the same time as disclosure, which would include the PPD. Having considered the matter further, the defendants now say they should give their response some three weeks before the date which they say is the appropriate date for the giving of disclosure; a date which itself is in dispute. For its part, the claimant says that the notice should responded to by 26th July. It is unnecessary to wait as long as the defendants were proposing and, indeed, it is inappropriate to wait as long as the defendants are proposing because the issues needed to be crystallised at as early a stage as possible and there is no good reason why a lot of the potential issues cannot be got out of the way in terms of knocking out those integers of the patent in suit which are admitted to be present in the defendants' products.

The dispute, therefore, is one as to dates. Ms. Berkeley starts by saying it is unnecessary for the claimants to have an answer as early as they say they need and she goes on to say that it is impractical for her clients to give an answer before the date on which they propose to give it, which is a date to towards the end of October.

In support of the impracticability, she relies on the recent unavailability of the representative of the clients because of holidays, the forthcoming unavailability of the partner in her instructing solicitor on a holiday, the unavailability hitherto of her chosen leading counsel because of his absence abroad and her own unavailability, as junior counsel, from 25th July to the end of August. In addition to that, they cites difficulties in getting hold of an expert.

In the witness statement provided by her in conjunction with this application, the deponent, who is a solicitor from the firm instructing Ms. Berkeley, indicates the difficulties that they have had hitherto in getting an expert and they still do not have one on board.

Ms. Berkeley says that while some of the questions might be thought not to require an expert in order to determine them, but without conceding that point, she says that some of them would need the input of an expert and the paradigm of that is one of the facts as to which an admission is sought which relates to whether the facers on the defendant's various products are indeed gas impermeable or not; the point that was taken in the correspondence. The defendants may well have points other than those referred to in the correspondence.

In addition, Ms. Berkeley says, correctly, she is not just faced with having to answer these questions in relation to one product; her clients have nine products, each of which comes in various thicknesses and across the nine products three different facings are used. There will therefore have to be a series of responses, one corresponding to each of the products.

In terms of timing, Ms. Berkeley points out that if the notice is responded to three weeks before disclosure, that will enable the claimant to carry out any necessary adjustments to its disclosure process, thereby saving costs in relation to any matters which turn out then to be admitted. Furthermore, the date is nine weeks before witness statements and so there is plenty of time for adjusting witness statements to reflect those facts which are going to be in issue as a result of the response of the Notice to Admit Facts. She points out that a premature date is simply going to produce a relatively useless Notice to Admit Facts because if the defendants do not have a full response, then they will simply make non-admissions when they might have made admissions if more time was given.

In terms of determining the appropriate date for the response for Notice to Admit Facts, I bear in mind the object of such a notice, which is to produce clarity as to issues and, in particular, factual issues at as early a stage as is possible, convenient and proper. I also bear in mind the proportionality of the exercise involved. The Patents Court Guide deals with admissions and the need to make admissions at as early a stage as is practicable in section 8. Paragraph 8.1 reads as follows:

Having considered the submissions of the parties and the issues and, indeed, the flavour of this case, it seems to me that this is a case in which the real issues need to be ascertained as soon as is reasonably practicable. In their response to the original allegations of infringement, the defendants relied on one area of infringement. If that remains the one area of infringement which is in dispute, then the sooner that all the other integers of claim 1 of the patent are disposed of, the better. Of course, as I have indicated, the defendants are not to be held to the terms of that letter, but looking at the integers overall, looking at the response to that letter, and looking at the uninformative nature of the proceedings, it seems to me to be clear that this is a case in which the defendants need to be pinned down as to what they are really saying on the infringement issue.

It seems to me that it is appropriate that that should be done at an early stage so that subsequent stages of the action, including disclosure, witness statements, and the future contemplation of the action can all be given an appropriate degree of focus. It would also, in my view, help this particular action if an early degree of focus is produced with a view to producing some earlier form of settlement.

I am, therefore, satisfied that a Notice to Admit Facts should be responded to at a date which is as early as is practicable and I do not accept that the earliest practicable date is that put forward by Ms. Berkeley. I do accept, however, that Mr. Acland's proposed date is unreasonably early, bearing in mind the work that has to be done and the importance of the document. It will have to be later than 26th July.

In choosing the date, I bear in mind what is said to be the unavailability of those who will need to participate in the exercise, but it seems to me that, with all due respect to her, Ms. Berkeley's absence on holiday for a period of five or six weeks is not something that should hold up the exercise, particularly as her chosen leader would be available (if indeed counsel's participation in the exercise is required to any significant extent at all).

I bear in mind the potential unavailability of an expert to answer some of the points, but it does seem to me that it is highly unlikely --I am looking at the matter realistically --that the services of an expert will be required in order to work out whether some of the facts should be admitted or not. The clearest case of that is probably the admissions which are sought under paragraph 2 of the notice, the content of which I have already read. Putting the matter shortly, in terms of the need for an expert, I do not think the exercise is as difficult as Ms. Berkeley sought to paint it. If an expert is not available in order to provide assistance on various points, then no doubt there will be a non-admission at that stage but, in my view, useful work will be done.

Nor is an enormous level of complexity added by the fact that the notice has to be dealt with in relation to each of nine products with various thicknesses and with three separate facings. The thicknesses, in my view, can only go to the question of the conductivity. Otherwise, the various thicknesses do not introduce variables which have to be separately addressed. The extent to which the nine products are different is not clear on the papers before me, but it is not apparent to me that the nine different products are sufficiently different so as to present an enormous amount of administrative difficulty in answering the question.

Nor does the three facings, even when added into the calculation, introduce any greater degree of variability than the need to consider gas permeability (and conceivably the perforations) questions in relation to any more than three different instances.

In other words, the variations in the defendants' product does not introduce the level of complexity that Ms. Berkeley suggested that it would.

In all those circumstances, it does not seem to me that the defendants can need or should have as long a period as the middle or end of October as Ms. Berkeley submits. They have had this Notice to Admit now for some three weeks. They have had the allegations of infringement for some six months. They have given no details as to where the real areas of the dispute are and, in my view, looking at this case overall, it cries out for a proper focus to be brought to bear on the real issues of dispute or, putting the matter conversely, the discarding of those areas which can now plainly to be seen to be not areas of dispute.

In those circumstances, looking at the reasonable timetabling, and bearing in mind the areas of confusion and difficulty which are introduced by varying summer holidays at this time of year, and acknowledging that there has to be a degree of careful answering in relation to the range of products with their various thicknesses and perforations, which is more a question of administrative collation rather than an anxious consideration of each of a huge number of products, it seems to me that this is an exercise which can be usefully done and should be done by 31st August.

That, in my view, gives the defendants a fair opportunity to answer the questions. It will produce an answer which will enable a narrowing of the dispute in terms of governing the conduct of the action at a time which is usefully early and does not, in my view, put the defendants under a burden which is any more significant than the later date proposed by Ms. Berkeley.

I shall, therefore, specify 31st August which, if anything, is generous, as being the date by which the response to the Notice to Admit Facts shall be supplied.