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

In managing a patent infringement dispute, the court must determine the practical consequences of non-compliance with pleading directions by reference to the history and circumstances of the case. A failure to comply need not be treated as a serious breach where the other party did not initially regard it as such and the default was not deliberate or blameworthy. The court may allow a fair period for amendment, taking account of the need to articulate the whole case and the time available before trial. A party advancing an infringement case must plead how its case fits the claim as a whole; the opposing party cannot ordinarily be required to formulate that case first.

The judgment concerned directions made after the trial of patent infringement proceedings. The court had previously found that BT’s NGA system infringed a valid patent claim, after which BT modified the system and sought a declaration of non-infringement within the existing proceedings. The issue was whether ASSIA’s amended pleading sufficiently explained how a Service Profile Table satisfied the relevant claim integers and interacted with the remainder of the claim.

The earlier procedural history was recorded in [2013] EWHC 3768 (Pat) and [2014] EWCA 80 (Pat). The central question was what further directions and period should be allowed for ASSIA to provide full particulars.

1. ASSIA’s amended Defence and Counterclaim did not fully comply with the earlier direction requiring it to plead with full particularity how the modified NGA system was said to infringe. Nevertheless, it was unfair and unrealistic to characterise the non-compliance as an important breach carrying the consequences sought by BT. The history showed that BT had not initially alleged a breach, and the circumstances did not involve deliberate or blameworthy default.

2. The infringement case could not be confined to the three claim integers initially addressed by BT. Because the claim integers interacted, ASSIA had to explain how its case concerning the Service Profile Table fitted the claim as a whole. BT was entitled to know the complete case it had to meet.

3. BT was not required to plead first in relation to the additional integers. It was for ASSIA, as patentee, to identify how the features of the modified system satisfied the claim. Until BT received that responsive pleading, it could not know what ASSIA would contend constituted a profile state transition matrix.

4. The fair period for ASSIA to provide the required particulars was until 15 September 2014. The court took account of the evidence concerning the availability of the necessary legal and factual personnel, the November trial date, and the parties’ agreement that no expert or fact evidence would be adduced without agreement or permission.

5. The order was made in the terms sought by BT, subject to the revised date. The parties’ agreed amendment permitting BT to add another version of the NGA system was allowed, although the court expressed concern that this might create later difficulties.

The judgment was a further procedural decision in proceedings following the trial judgment reported at [2013] EWHC 3768 (Pat). The judgment also records an earlier supplemental judgment reported at [2014] EWCA 80 (Pat). No appeal from this procedural decision is stated.