Adaptive Spectrum And Signal Alignment, Inc v British Telecom Communications Plc

This is an argument which arises from an order dated 14th January 2014, following my judgment in the trial of this action. The background to the case is set out in my main judgment at [2013] EWHC 3768 (Pat) and the background to the January order is set out in my supplemental judgment [2014] EWCA 80 (Pat).

Paragraph 15 of the order of 14th January set out a series of directions for the determination of an issue which had arisen after trial. I found that the NGA system run by BT in its form as it was at trial infringed a valid claim of the ‘790 patent. The issue was whether a modification to the NGA system would infringe. By the time the judgment was handed down formally in public, BT had modified the system. They contended the modified system did not infringe. ASSIA did not agree that the modification rendered it non-infringing.

I allowed BT to bring forward its claim that this new system did not infringe as an application for a declaration of non-infringement by amendment in the existing proceedings rather than requiring BT to initiate new proceedings. In the course of argument I described this as a massive indulgence. It was fair to take this course not least because BT's position was that it had been taken by surprise by ASSIA's infringement case which had finally succeeded at trial. There was some force in this although not as much as BT suggested.

The full directions were:

“15.

The following directions shall apply to the determination of the issues set out in paragraphs 13 and 14 above:

a.

The Defendant shall within 21 days:

i.

Amend its Counterclaim to seek declaratory relief in accordance with paragraphs 12 and 13, amend its Product and Process Description to describe the NGA system as modified and/or proposed to be modified and provide to the Claimant those parts of the Mathematica and PL/SQL codes which correspond to the functionality described in paragraphs 123.3A; 140A and 146A of Confidential Exhibit CMC-4 served in these proceedings; and

ii.

Serve on the Claimant a Statement of Case on Non-Infringement setting out with full particularity (1) the features of the NGA system as modified and/or proposed to be modified upon which it intends to rely in support of its contention that it has rendered non-infringing all products and systems in its possession, custody or control which have been found to infringe European Patent (UK) 1,869,790, (2) how those features are said to render those systems non-infringing in accordance with the construction of the said patent adopted in the judgment of 3 December 2013 herein.

b.

The Claimant shall within 14 days of receipt of the amended Counterclaim, PPD and Statement of Case on Non-Infringement required by paragraph 15(a) request any further information or clarification from the Defendant regarding the declaration(s) sought;

c.

The Defendant shall serve a response to any such requests within 14 days:

d.

Within 21 days of the latter of (1) the receipt of the amended Counterclaim, PPD and Statement of Case on Non-Infringement required by paragraph 15(a) or (2) the receipt of the further information required by 15(c), the Claimant shall:

i.

acknowledge in writing that the Defendant's NGA system described in the amended PPD served in accordance with paragraph 15(a) does not infringe European Patent (UK) 1,869,790; or

ii.

amend its Defence to Counterclaim accordingly and serve it on the Defendant together with an amended Statement of Case on Infringement setting out with full particularity how the features of the Defendant's NGA system as described in the amended PPD served in accordance with paragraph 15(a) are said to give rise to infringement of European Patent (UK) 1,869,790 in accordance with the construction of the said patent adopted in the judgment of 3 December 2013 herein.

e.

The Claimant and Defendant shall have permission to call one expert witness each, in the field of software engineering.

f.

The parties shall exchange expert evidence in chief not later than 8 weeks before the date fixed for the start of the trial, and any expert evidence in reply not later than 4 weeks before the date fixed for the start of the trial.

g.

The parties be at liberty to apply for directions as to the admission of additional fact evidence within 14 days of service of the Claimant's Statement of Case on Infringement pursuant to paragraph 15(d)(ii).

h.

There shall be a trial of the issue set out in paragraph 13 above (and, if permission is granted, of the issue set out in paragraph 14 above), to be heard in front of Birss J with an estimate of 1-2 days plus 1 day pre-reading.

i.

The trial shall be fixed for the first available date convenient to the Court and to the parties in the window 1 May to 31 October 2014.

j.

The parties shall make an appointment to attend the Listing Officer by no later than 5 February 2014 to fix a trial date.

k.

Any of the timings stated in these sub-paragraphs may be varied by the mutual consent of the parties or otherwise with the leave of the Court.

In accordance with the order BT provided the Product and Process Description and Statement of Case provided for by 15(a)(i) and (ii). Within the appropriate time ASSIA responded explaining why BT was wrong in asserting that the NGA system did not infringe.

That took place in April. Following correspondence to and fro, Requests for Further Information and Responses to those Requests, in the last couple of weeks it has become quite clear that more detail is needed from both parties to fully articulate the issues that need to be decided.

The point taken by BT focused on a change whereby BT had replaced a loop routine which used a cap level table (these are explained in my judgment) with an equation. The particular element of the modified NGA system which BT said now did not infringe was the part using the equation. BT put forward its case that the use of the equation in the modified NGA system did not satisfy three integers of claim 1. As a result ASSIA responded addressing those three integers of the claim. However, ASSIA's responsive case was not that the equation satisfied those three integers; ASSIA’s case focused on a different thing in the BT system, called a Service Profile Table (SPT). ASSIA contended that this SPT had not been disclosed before (although I should record that BT do not accept that it has not been disclosed before). ASSIA’s case was that the SPT did satisfy the relevant requirements of the three integers of the claim. In particular, putting it shortly, ASSIA contended that the SPT was a profile state transition matrix (see my main judgment).

What has now emerged is that it is important that both sides, and the court which comes to decide this question, understand the whole of ASSIA's case that the SPT is a profile state transition matrix within the claim. That requires a focus on the other integers of the claim and not just the three integers referred to already. So far the statements of case have only focused on the three integers referred to. BT is entitled to find out how, and to what extent, this argument fits the modified NGA system into the rest of the claim.

I am not prejudging the issue of infringement on this application. Nevertheless it is clear (see my main judgment) that many of the integers in this claim interact with each other. It is necessary and fair that these interactions need to be addressed. By simply focusing on three integers, neither side has been able to do that.

BT say that this is ASSIA's fault. Although there some force in that, there is also force in ASSIA's retort that BT have known for many weeks that ASSIA was not prepared to enter into a debate on the pleadings about these other integers because they had not been raised by BT in the first place. It is obvious that the matters could and should have been sorted out before now.

As it comes before me, Mr. Cuddigan, who appears for BT, submits that ASSIA are in breach of the order, in particular paragraph 15(d)(ii), since that order required ASSIA to set out, with full particularity, how the features of the defendant's NGA system, as described in the amended PPD, served in accordance with paragraph 15(a), are said to give rise to infringement. I accept Mr. Cuddigan's submission that on analysis today it is clear that the Amended Defence and Counterclaim served by ASSIA does not fully comply with 15(d)(ii). However, to characterise this as a breach of the order, with the consequences which Mr. Cuddigan's submissions would have it have, is unreal having regard to the history of how matters proceeded since these orders were made and how the parties have been discussing the matter.

When this application before me was originally issued, BT itself was not suggesting that ASSIA was in breach of the order. That allegation only came later. Although I accept Mr. Cuddigan's submission that on analysis it can be seen that the pleadings produced by ASSIA are not in compliance with the order, to characterise it as an important breach when the other party did not even regard it as a breach would be unfair.

The real debate is what to do from now on and how much time is required to put matters right. Mr. Cuddigan submits that the order I should make is an order requiring ASSIA to provide an Amended Statement of Case compliant with paragraph 15(d)(ii) of the order of 14th January 2014. He submits that that should be done by 25th July, today being 22nd July. He submits that in the circumstances in which the defendant is in breach of the order, it is fair to put the claimant on tight terms as to compliance with the order and to give him a short period in which to comply.

Mr. Cuddigan also submits that from the witness statement of ASSIA’s solicitor Ms. Alex Brodie, ASSIA’s evidence backing up its assertion that it cannot provide the relevant information until 15th September is not sufficiently cogent to justify a period of that length. Essentially, the point of Ms. Brodie's evidence is that there is no single day between now and 1st September on which all three necessary persons will be available to consider, discuss and draft the relevant responses. They are (i) Mr. Mesel, ASSIA’s general counsel and the person from whom the legal team in the UK take instructions; (ii) Mr. Iain Purvis QC, ASSIA's leading counsel; and (iii) Mr. Joe Delaney, ASSIA's junior counsel. Mr. Campbell, who appears for ASSIA today, was not instructed at trial and was instructed solely for the purposes of dealing with this application given the availability of the other counsel.

As I say, Mr. Cuddigan suggests that this evidence is not sufficiently cogent to justify, as he would put it, an extension of time, particularly in circumstances where the claimant is in breach of the order. He also submits that his clients will suffer serious prejudice if too long a time is taken to provide this information.

The hearing to decide the issues of infringement is due to take place in November 2014. I will confess I was dismayed when I read the papers and discovered that the hearing to resolve this matter has been fixed for November. As can be seen from the earlier judgment in January, ideally this matter ought have been resolved before the appeal from the main judgment was heard by the Court of Appeal and I anticipated it was going to be. At the time that was a reasonable thing to anticipate but it has been proved not to be right. It is unsatisfactory, but there is nothing I can do about it now.

Mr. Campbell also points out that the order to be made today includes an agreed term varying the earlier order which would have permitted the parties to serve expert evidence from a software expert. They have decided that they do not need that software expert to deal with the question which that evidence was there to deal with. Thus neither party shall adduce any expert evidence or fact evidence without either the agreement of the other party or permission of the court. Mr. Campbell submits that this is an important element in the balancing exercise. It means that both sides are prepared to countenance an order of this kind despite the fact they have not seen what either side says about these other claim integers.

I should also record that the parties have also agreed that BT can amend its Defence and Counterclaim again to add yet another different version of the NGA system which it contends does not infringe. The parties contend (although I have some doubts about this) that the amendment will not have a material effect on the time estimate for the November trial. Since they are agreed, I will not interfere with that agreement. One cannot help but observe that it may be storing up problems for the future to add yet another system into these proceedings.

The only real question I have to decide is how long should ASSIA to be given to provide the full particulars? Mr. Campbell submitted that I should make an order requiring BT to plead to the other integers of the claims first. I do not accept that. As Mr. Cuddigan has said, it cannot be for BT to work out what the patentee's case would have been in relation to the SPT. Until BT had seen the patentee’s responsive pleading in this exercise BT could not have known what it was that ASSIA would contend was a profile state transition matrix. I reject Mr. Campbell's suggestion that BT should go first.

It is unreal to expect ASSIA to provide the information that it needs to provide by 28th July 2014. If this was a case of deliberate or blameworthy default of a court order, I might have taken a different view, but the circumstances are such that it would not be fair to regard the breach as of real importance in the circumstances of this case.

The question is how much time should I give ASSIA in order to provide this information. On the basis of Ms. Brodie's evidence, I am satisfied that the fair period is the period up to 15th September. Given the time until trial and the practicalities of the matter, there is no good reason why I should split the difference between now and 15th September. The order will be in the terms sought by Mr. Cuddigan, paragraphs 4 and 5, but the date will be 15th September.