A recent decision of the Patents Court illustrates the importance of claimants providing proper details of their claim, in order to allow a defendant to understand the case against it. In Select Healthcare v Cromptons (link to judgment), in which we are advising the defendant, the claim is for infringement of a patent relating to a patient slide sheet with a “pimpled finish”. The defendant asked for clarification of the case, including details of what was meant by “pimpled finish”, and where the pimples were alleged to be found on the defendant’s product. Following a refusal by the claimant to provide any such information, the defendant applied to the court for an “unless order” i.e. unless the requested information is provided, the claim should be struck out.
The judge, Mann J, ordered the claimant to provide a statement of case and an expert report explaining its case. The judge, almost unprecedentedly, also awarded the defendant its costs on the higher, indemnity, basis, on the grounds that the claimant had wilfully refused to disclose its case until compelled to do so at the hearing.
There is of course a potential dilemma for claimants in any case, between providing sufficient information to comply with the Civil Procedure Rule, and the understandable (but ultimately, as this case shows, ill-judged) desire to “keep one’s powder dry” as to certain aspects of a claim. A claimant is not required to disclose full details of its entire case prior to trial, but it is clear in this case that the judge believed the claimant had overstepped the mark, and penalised it by ordering indemnity costs.
The moral of the story is that a claimant, when faced with a request for clarification and/or further information from the defendant, must ensure it has provided proper details of its claim before it can safely decline to provide the requested clarification and/or further information.
Tags: indemnity costs, infringement, patent