Compactgtl Plc v Oxford Catalysts Group Plc & Ors

In patent litigation, a party ordered to provide further information must identify the relevant claim integers and explain where they are said to be found in the alleged infringement. This does not require a lengthy construction argument or trial skeleton. An unless order is inappropriate where compliance with full particulars could generate disputes about whether the order has been satisfied and expose the proceedings to disproportionate satellite litigation. A party should receive a fair period to provide information where the breach was not deliberate. Experimental evidence served after the court-imposed notice date will ordinarily be admitted only in very exceptional circumstances. The court cannot make a peremptory order requiring details which were encouraged but never ordered, although it may make appropriate case-management orders to clarify both infringement and validity cases.

Two related patent actions concerned Fischer-Tropsch gas-to-liquid technology. CompactGTL sought revocation of seven patents and relief for unjustified threats. Velocys, the exclusive licensee, brought an infringement action concerning two of those patents, alleging infringement by CompactGTL’s process and catalysts.

At an earlier case management conference the court directed Velocys to answer requests for further information, identify independently valid claims and provide disclosure. The court also fixed a date for notices of experiments and encouraged, but did not order, further clarification of the parties’ validity cases. At the review hearing CompactGTL sought unless orders concerning infringement particulars and experimental evidence, together with an order requiring Velocys to identify its inventive-step case. The issues were whether the earlier order had been breached, what further case-management directions were appropriate, and whether any extension concerning experiments should be granted.

1. Further information. Velocys had complied with the order so far as the process allegations were concerned. Its explanation of the alleged residence time and the inference drawn from available patent information constituted a proper case. It had, however, breached the order concerning the product allegations because it had not identified the catalyst elements said to correspond to the claim features. That information could be supplied without a lengthy argument on construction.
2. Unless order. The court ordered further infringement information, including a breakdown of the relevant claim integers against the alleged infringement and the matters identified in the requests. The order was not made on unless terms. Requiring full particulars on that basis would create an enduring dispute about whether the particulars were complete and could lead to the proceedings being struck out through satellite argument. The breach was not deliberate, and 28 days was a fair period for compliance.
3. Experiments. No extension was granted because no application for one had been made. Both parties were past the date fixed for notices of experiments. Given the trial timetable, experimental evidence would ordinarily be admitted only in very exceptional circumstances.
4. Validity. Velocys was not in breach of any order concerning detailed validity allegations, because the court had encouraged but had not required that exchange. A peremptory order would therefore have been wrong. Nevertheless, further clarification was necessary. Velocys was ordered within 28 days to identify the inventive step relied upon for each relevant claim against each pleaded prior-art document. CompactGTL was also ordered within 28 days to reconsider and provide a further response to the notice to admit, including admissions supported by its own evidence.

The judgment followed a case management conference on 10 June 2013, at which directions were given concerning further information, disclosure, independently valid claims and experimental evidence. The present hearing was a review hearing in the same first-instance proceedings. The court made further case-management orders and refused the requested unless terms and any extension for experimental evidence.