Vringo Infrastructure Inc. v ZTE (UK) Ltd

A product and process description must contain full particulars sufficient to enable the infringement issues to be resolved. It must be complete in all relevant areas and cannot consist of general or conclusory assertions. Where a party asserts that a relevant feature is absent, the description must explain why. That explanation must appear in the product description itself, rather than in evidence served later. In standard-essential-patent litigation, a patentee relying on standards should first identify the standards said to be relevant. The defendant is then required to describe the products by reference to the case properly identified.

This was an interlocutory application in patent proceedings concerning three telecommunications patents declared essential to standards. By the hearing, two patents had been abandoned and a third claim had been withdrawn, leaving one patent in issue.

The defendant had served a short product and process description stating that its equipment did not comply with specified clauses of a telecommunications standard, but giving no explanation. The claimant sought fuller particulars. The court considered the adequacy of the description, the effect of later witness evidence, the identification of relevant standards, and whether focused disclosure should be ordered.

1. Product and process description. The description was inadequate. It identified the products and asserted non-compliance with specified clauses, but did not explain what about the products or processes led to that conclusion. Under the principles stated in Consafe v Emtunga [1999] RPC 154 and Taylor v Ishida [2000] FSR 225, a product description performs a function equivalent to disclosure and must contain particulars sufficient to resolve the infringement issues. Those principles applied under the CPR as they had under the RSC.
2. Whenever a product description asserts that something relevant is absent, it must explain why. A later witness statement cannot cure that defect retrospectively. However, the defendant’s detailed witness statement was treated as part of its product description for the purposes of the case.
3. Standards relied upon. Where a standard-essential-patent infringement case is pleaded by reference to standards, the patentee should identify the standards on which it relies before requiring a fuller product description. The defendant was entitled to have understood the pleaded case as focused on the specified standard. If other standards were relied upon, the claimant had to identify them.
4. The claimant was required to explain in detail why the defendant’s expanded description remained inadequate. The court also ordered focused disclosure concerning whether the defendant had offered equipment capable of providing the relevant packet-switched location service. It declined to order wider disclosure on this application, leaving that issue for later if necessary.