Clearswift Ltd v Glasswall (IP) Ltd

This is an application dated 29 June 2018 for the admission into evidence of a third witness statement dated 25 June 2018 of Alexander Laurence Shipp, the Claimant’s expert in these patent invalidity proceedings.

The witness statement was provided to the Respondent on 25 June 2018 (approximately two weeks ago), by letter from the solicitors for the Claimant. It was objected to on behalf of the Respondent that same day. After further exchanges of correspondence, this application was made to the court for permission for it to be admitted. The application was listed for today, the start of the trial, which is scheduled to last for a further four days after today. The application is supported by evidence from Mr. Gareth Morgan of the Claimant’s firm of solicitors.

The witness statement is approximately five pages long, or 27 paragraphs. It deals with four issues: (1) the relevance to the common general knowledge of a text book from 2005 written by Peter Szor; (2) what is said to be a “fundamental technique” of the patent; (3) a brief discursus on what is referred to as the “Halting problem”; and (4) a further discussion of one of the pieces of prior art referred to in the proceedings as “Avecho”.

I should also record that a CMC was held in this matter on 12 July 2017, before HHJ Hacon sitting as a Judge of the High Court. His Honour made orders for the preparation of evidence that provided for (a) permission for each party to adduce evidence from a single expert 12 weeks before trial; and (b) expert reports in response to be exchanged 6 weeks before trial. Order 9 of His Honour’s order required the other party’s consent or the court’s permission to adduce any other written evidence. His Honours order also included general liberty to apply on three days’ notice.

Dr. Brian Nicholson, on behalf of the Claimant, puts the case for admission of the witness statement as follows. He points to Practice Direction 32.2.5, which is on page 1039 of the current edition of the White Book. The White Book cites a decision of Peter Smith J in Nottingham & City of Nottingham Fire Authority v Gladman Commercial Properties Ltd [2011] EWHC 1918 (Ch), where the judge set out that the admission of evidence, including late evidence, is a matter for the court’s discretion to be exercised in light of the Overriding Objective. What matters is that justice is done between the parties, taking into account the prejudice that exists in relation to the party objecting to the admission of the evidence and the importance to all parties of having the fullest opportunity fairly and fully to present their case.

Dr. Nicholson submits that each of the four aspects of the evidence to which I have referred was raised for the first time in the second witness statement of the Respondent’s expert, Professor Christopher Mitchell, and that therefore Mr. Shipp needs an opportunity to respond. Dr. Nicholson says that all four points are issues in the proceedings, and that it would be preferable to have the matters dealt with by way of a witness statement, rather than for that information to come out during the course of cross-examination or re-examination.

He submits further that there is no prejudice to the Respondent, it having had two weeks now to deal with the witness statement and that, given the short length of the witness statement, it ought to be allowed in.

In relation to HHJ Hacon’s order, Dr. Nicholson says that whilst two rounds of evidence were provided for, a third round of evidence was not expressly excluded by that order, and that the liberty to apply provided for by His Honour allows the Claimant to exercise that liberty by making this application before me.

In response, Mr. Richard Davis for the Respondent says that evidence “is not a game of tennis”; rather, there was a clear path set by HHJ Hacon which provided for only two rounds of evidence. Rather than looking at whether or not there is prejudice to the Respondent (and Mr. Davis says there is) the correct approach is rather to say that the CMC having provided for two rounds of evidence, it is up to Dr. Nicholson now to make his case that this evidence ought to be admitted. It is not simply sufficient to say, “There is no prejudice, I get to have my evidence in”.

In relation to the four parts of Mr. Shipp’s third statement, Mr. Davis submits that each of them had been raised earlier in proceedings than Dr. Nicholson suggests:

In relation to the question of prejudice, Mr. Davis mentions that whilst he received Mr. Shipp’s third witness statement two weeks ago, he was in another trial at that time and for the following week and was only able to discuss the witness statement with Professor Mitchell last Tuesday, a week prior to today. Rather than asking what prejudice the Respondent suffers, he submits that the question ought to be “why should the Claimant be expected to deal with a late witness statement when it is busy preparing for trial?” Mr. Davis conceded that any prejudice had already been suffered as he and his team have had to deal with the witness statement and this application when they ought to have been preparing for trial.

I accept what Mr. Davis has said in relation to prejudice and I accept his submission that all four issues were in play in these proceedings from the first round of evidence. I do not accept that Mr. Szor’s textbook, the “Halting problem” or the issue in relation to Avecho were first raised by Professor Mitchell in his second witness statement.

The parties agree that whether or not Mr. Shipp’s third witness statement should be admitted is a matter in my discretion. In exercising that discretion, I need to have in mind the Overriding Objective. The Overriding Objective is not just to do justice between the parties but also to ensure that litigation is carried out in a cost-effective and proportionate manner, that parties are not surprised by what other parties do, and that costs are thereby not driven up. This is particularly so where, as here, a case is under the costs management regime. In this case, each party’s maximum recoverable costs have already been set by HHJ Hacon at the CMC.

“[S]aving expense” is specifically set out in the Overriding Objective. Part of the question for me, therefore, is whether admitting this evidence at this late stage will prolong or shorten the trial, and/or whether costs will be driven up or reduced.

I have read the evidence, particularly in light of the other witness statements admitted in the proceedings, and it seems to me that issues 1 and 3 (the relevance of Mr. Szor’s textbook to the common general knowledge and the Halting problem) are brief indeed and will not affect the length or costs of the trial one way or the other. Having that evidence before trial likely assisted the parties in understanding each other’s cases.

In relation to the other two issues, in my judgment, it has assisted the parties in having that information early. To exclude it now will merely lengthen cross-examination and/or re-examination. That would drive up costs, which potentially would not be recoverable under the costs regime set by HHJ Hacon.

I should add that I do not consider that there is anything in Mr. Davis’s point concerning HHJ Hacon’s orders following the CMC. Whilst His Honour set out a timetable for evidence, I do not understand him to have ruled out further evidence, either expressly or implicitly. Indeed, he ordered that further evidence could be relied on with the other party’s consent on the court’s permission and he gave the parties liberty to apply, which the Claimant has done. I do not consider that His Honour’s orders set the hurdle for the Claimant any higher than the test set out in Nottingham v Gladman.

I therefore give permission for Mr. Shipp’s third witness statement to be admitted. That is the course that best fulfils the Overriding Objective, despite the prejudice already suffered by the Respondent.

I am conscious of the risk that this decision might be construed as carte blanche for parties to submit evidence late. That is not the case. As Mr. Davis submitted, evidence “is not a game of tennis”. The late evidence has been admitted in this case having taken into account the Overriding Objective, having been aware of the prejudice already suffered by the Respondent, and having carefully weighed the issues before me on the basis of where I see justice lies as between the parties. Litigants should not interpret this judgment as an invitation to submit evidence late simply because they wish to do so.