Unwired Planet International Ltd v Huawei Technologies Co Ltd & Ors

On 26th March 2015 I heard the parties and gave various case management directions. The judgment on that occasion is [2015] EWHC 1039 (Pat). I directed that the parties should attempt to agree on a form of words embodying the decision and directed that I would resolve it on paper or, if it was sufficiently important and as a last resort, appoint another hearing.

The parties could not agree and filed a draft order embodying the rival proposals and written submissions. I received:

I was able to deal with the matter on 28th April. I decided to deal with the matter on paper because the issues seemed suitable to be resolved that way and because a decision was needed urgently. The defendants’ draft proposed that a document from Unwired Planet should be served at 4pm 29th April. I resolved the issues and sent a copy of the order to the parties, indicating that they were entitled to know the reasons for the order and so if any of them wished for a statement of the reasons, they should let me know. They did so and so this judgment has been prepared.

The first issue is the date when the document due from Unwired Planet should be served. I prefer the defendants’ submission that the date should be a certain date rather than the order specifying that the date is the same as the date for service of expert’s reports. The document may or may not end up being served at the same time.

The next question was what the date should be. The defendants’ proposed 29^th April. Unwired Planet submitted that if, contrary to their case, the date was to be fixed, they needed more time. There had been a two week delay in preparing expert evidence. I accept that the date should be later than 29^th April, particularly since that would be the day after the terms of the order were resolved. A fair period was until 7^th May. That way there seemed to be no need to extend the date proposed by the defendants for their disclosure (27^th May).

The second issue is the form of words relating to the order relating to the identification of the issues. I prefer the defendants’ proposal. It makes it clearer what Unwired Planet must do and makes clear that the document will be a statement of Unwired Planet’s case and could not be read as giving a party unconstrained permission to amend their existing case. It will require Unwired Planet to state why disclosure should be given.

The wording of the order relating to the disclosure in response follows from the previous decision.

The debate here is whether EP (UK) 2 229 744 should be included in this order along with the other two patents in setting a date for any application to amend. The application before the court related only to the 287 and 514 patents. I decided to make the order for those two patents. The possibility of making an order for 744 was raised by me during the hearing. I asked why I should not make a similar order for that patent. It seemed to be sensible for the same reasons. In the written submissions the defendants submitted I should. Unwired Planet submitted I should not.

The defendants submitted 744 should be included because the risk of late amendment whether by central amendment or otherwise could occur as much for 744 as for the other two patents and so the same order should be made for 744. Unwired Planet’s main submissions on the point are in the 27^th April note. The points are as follows. 744 was not part of the application before the court and Unwired Planet’s counsel was not prepared to address the matter at the hearing. Samsung (who led on this) did not press the matter at the hearing. My ex tempore judgment which dealt with 287 and 514 did not refer to 744. The reason for making the order for 287 and 514 is the possibility of central amendments in the EPO. The 744 patent is not in the EPO (referring to the transcript of the hearing) and the same rationale does not apply to it. There is no set of central amendments that the claimant at this stage proposed to make to the 744 patent. Any amendments would be responsive to the defendants’ validity reports, as is normal practice.

I accept Unwired Planet was not able to deal with this at the hearing but it has now had an ample opportunity to address it. At first sight the reasons for making the order in relation to the 287 and 514 patents are equally applicable for 744. There is a strong case to make such an order. The submission by Unwired Planet that the 744 patent “is not in the EPO” takes a comment on the transcript out of context. Unlike the other two patents, 744 is not in opposition proceedings in the EPO. That is what “not in the EPO” meant. However like the other patents, it is a European patent and subject to the same possibility of central amendment in the EPO. It is that characteristic which is important. So the reasons advanced by Unwired Planet why 744 should be treated differently from 287 and 514 are not convincing. I prefer the defendants’ submissions. The same logic applies to 744 as to the other two patents.

Unwired Planet submitted that a further paragraph should be included which stated that: for the avoidance of doubt, paragraph 5 shall not prevent Unwired Planet from making further applications to amend the patents after the date specified. The defendants objected. I decide not to include that paragraph as it prejudges the question of what might or might not happen in future. The purpose of paragraph 5 is to manage the case appropriately by setting a date for any patent amendment applications. The wording proposed by Unwired Planet would undermine that purpose, just as would wording going the other way which expressly purported to restrain Unwired Planet from making any further conceivable applications in any circumstances whatsoever.

The parties could not agree what happened to the balance of Samsung’s application. Unwired Planet said it had been dismissed and Samsung said it had been “held over”. In fact Samsung’s counsel said that aspect was not being pursued at that time and so that is the wording I have chosen for the order.

After the order was made and sealed Unwired Planet indicated for the first time that the effect of including the 744 patent in paragraph 5 of the order would be to require any amendment application be served on 29^th April and that Unwired Planet would seek an extension of time. Service on 29^th April would clearly be impractical. The point could and should have been raised before. In any event, exercising the court’s power under CPR r3.3(4) I will extend the time until 7^th May 2015. All parties have permission to apply to set aside, vary or stay that order. I will convene a 15 minute telephone hearing to take place at 9.30 am on 6^th May 2015 (or such other date and time and mode of hearing as the parties can agree with the listing office) to deal with Unwired Planet’s application for an extension of time.