The Unified Patent Court
Sir David KITCHIN
Lord Justice, Royal Courts of Justice
Development of a common judicial culture and judgecraft among the judges of the UPC
1.1. I have been invited to discuss the development of a common culture and judgecraft in the UPC. I do so with a certain amount of trepidation for many of you already have great experience as judges, and these are topics upon which judges will, quite naturally, have their own opinions. So please consider what follows as no more than a personal viewpoint and something upon which to draw so far as it may be helpful to do so.
1.2. One of our great judges, Lord Denning, the Master of the Rolls, told a story of an occasion when he was sitting in the Court of Appeal with Lord Justice Diplock. Miss Stone appeared before them. She made an application which the court refused. But she was sitting in the front row with a bookcase within her reach. Having lost she picked up a book of reported cases and threw it at Lord Denning and Lord Justice Diplock. It flew between them. So she picked up another and that went wide too. She said, "I am running out of ammunition". But the judges took no notice. She hoped they would commit her to prison for contempt of court, just to draw more attention to herself. But since they took no notice she went towards the door. She left saying "I congratulate your Lordships on your coolness under fire".
1.3. On another occasion Lord Denning had to deal with a rather more accomplished litigant, Mr Quintin Hogg, then the Right Honourable Quintin Hogg QC, MP and later to become Lord Hailsham of St Marylebone, the Lord Chancellor. He had written an article in the satirical magazine Punch criticising the Court of Appeal in stringent terms for decisions which, he said, rendered a particular piece of legislation unworkable. He was charged with contempt of court and his case came before the Court of Appeal where he was represented by Sir Peter Rawlinson QC. He argued that the article constituted a criticism which Mr Hogg had a right to state publicly. Lord Denning agreed with him, and this is what he said:1
"It is the right of every man, in Parliament or out of it, in the press or over the broadcast, to make fair comment, even outspoken comment, on matters of public interest. Those who comment can deal faithfully with all that is done in a court of justice. They can say that we are mistaken, and our decisions erroneous, whether they are subject to appeal or not. All we would ask is that those who criticise us will remember that, from the nature of our office, we cannot reply to their criticisms. We cannot enter into public controversy. Still less into political controversy. We must rely on our conduct itself to be its own vindication.
Exposed as we are to the winds of criticism, nothing which is said by this person or that, nothing which is written by this pen or that, will deter us from doing what the occasion requires, provided that it is pertinent to the matter in hand. Silence is not an option when things are ill done.
So it comes to this: Mr Quintin Hogg has criticised the court, but in so doing he is exercising his undoubted right. The article contains an error, no doubt, but errors do not make it a contempt of court. We must uphold his right to the uttermost."
1.4. These are illustrations of a truth with which we are all familiar. The reputation of a court and the quality of its judges and their decision-making depend upon more than a knowledge of the law and rules of procedure, important though these undoubtedly are. Judges must display wisdom, independence and integrity, and they must treat all who come before them equally. All of these qualities are as important as competence and diligence. I think Mr Justice Thomas, a judge of the Supreme Court of Queensland put it very well:
"We form a particular group in the community. We comprise a select part of an honourable profession. We are entrusted, day after day, with the exercise of considerable power. Its exercise has dramatic effects upon the lives and fortunes of those who come before us. Citizens cannot be sure that they or their fortunes will not some day depend upon our judgment. They will not wish such power to be reposed in anyone whose honesty, ability or personal standards are questionable. It is necessary for the continuity of the system of law as we know it, that there be standards of conduct, both in and out of court, which are designed to maintain confidence in those expectations."2
1.5. The UPC does, of course, pose particular challenges. It is a court, the like of which has never been seen before. It will bring together judges with widely different backgrounds. And it will have divisions in many different countries. So a focus on the development of a common approach by judges to the discharge of their duties is essential if the aims of this new court are to be achieved. Fortunately, the Statute and the Agreement do provide a framework within which the necessary systems can be, and I am sure will be, developed. Beginning with the Statute, it is the responsibility of the Presidium to establish guidelines for the training programme for judges and to supervise their implementation (Article 15(3)), and to adopt appropriate training regulations (Article 11). More specifically, under Article 19 of the Agreement, a training framework is to be set up to improve and increase patent litigation expertise and to ensure its broad geographic distribution. It is to focus on internships, the improvement of linguistic skills, the technical aspects of patent law, the dissemination of knowledge and experience in civil procedure and the preparation of candidate judges. Just as importantly, this training framework is to provide for continuous training and, to that end, must ensure that regular meetings take place to discuss developments in patent law and ensure the consistency of the court's case law. All of these matters are important, for it seems to me that it is only through judges meeting and discussing topical issues and difficulties that common approaches can be developed.
1.6. Any such training strategy must, I think, be evolutionary, and build on the strengths of the training systems of the judicial systems of participating member states and supporting organisations and, I would suggest, have certain overriding objectives, namely to strengthen the capacity of judicial office holders to discharge their judicial functions effectively and enhance public confidence in the UPC system. There is a further consideration. This training must satisfy the requirements of the judicial leaders in the Presidium. This implies to me that it is, ultimately, under the control and direction of the judges, and rightly so. Of course, support from the various European institutions, the European Patent Office, academic bodies and users will be both welcome and indeed essential. However, I suggest that it is the judges who must take ultimate responsibility for their own court and how it is conducted.
1.7. Judicial training must involve a number of different elements including substantive law and procedure. But the focus of this paper is another and equally important aspect of any judicial training, namely the acquisition and improvement of the judicial skills known as judgecraft, and the development of a common culture throughout this new court. These are conveniently considered under three headings: judicial conduct, case and court management and judgments.
II. Judicial conduct
2.1. All serving judges will have their own ideas about judicial conduct. But the UPC must develop its own standards to which the public may properly expect its judges to adhere. I see these as the foundation for the culture of the new court. But what should they cover? I would suggest they must include judicial independence, impartiality, integrity, propriety, competence and diligence, personal relationships and perceived bias, and activities outside court. Let me just develop some of these.
2.2. Judicial independence and an understanding of this as a part of the culture of each and every judge is the cornerstone of any judicial system and a vital safeguard of the freedom and rights of all citizens under the rule of law. The judiciary, collectively and individually, must be and be seen to be independent of the legislative and executive arms of any government, institution or other body. This is, it seems to me, particularly important with the UPC. The relationship between the UPC judiciary and all such entities must be one of respect, with each recognising the proper role of the others. Judges must take care that their conduct, whether in public or in private, does not undermine their institutional or individual independence. All of these are reflected, albeit concisely, in Article 17 of the Agreement. Of course, judges may discuss between themselves difficulties arising in any particular case or more generally. But, at the end of the day, each and every judge is responsible for his or her own decision.
2.3. Impartiality is another part of the bedrock of any effective judicial system. At its heart this requires a judge to ensure that his or her conduct, in and out of court, maintains and enhances the confidence of the public, the professions and potential and actual litigants in the impartiality of that judge and the judiciary as a whole. In England each and every judge must take an oath to do right to all manner of people without fear or favour, affection or ill-will. Article 6 of the Statute seems to contemplate that judges of the UPC should also take an oath. Here I have formulated a possible oath for consideration based upon the terms of that provision:
"I promise to perform my duties impartially and conscientiously and to preserve the secrecy of the deliberations of the court."
2.4. Judicial office also brings with it limitations on private and public conduct of judges, a matter to which I must return. But then again it must be recognised that there is a public interest in judges participating, so far as their office permits, in the lives and affairs of their communities. Judges must, of course, seek to be courteous, patient, tolerant and punctual, and respect the dignity of all persons appearing before them. They must avoid impropriety or the appearance of impropriety in all activities they undertake. They must appreciate that it is their individual duty to take reasonable steps to maintain and enhance their knowledge and skills necessary to carry out their duties. All of these are matters which I think should form part of the education of new UPC judges so that they develop as an integral part of the culture of this new court.
2.5. There are two aspects of conduct which I think merit particular consideration at this stage. The first is personal relationships and perceived bias. The importance of this is recognised in Article 7 of the Statute which specifies that judges may not take part in proceedings in which they have taken part as an adviser; have been a party or acted for one of the parties; have been called upon to pronounce as a judge or otherwise; have a personal or financial interest; or are related to one of the parties. This provision leaves considerable room for interpretation, not least because it does not itself identify any particular principle which is to be applied. Nevertheless, I think the intention behind it is tolerably clear. The question is whether a fair-minded person would reasonably believe the judge will not be able to bring an impartial mind to bear on the particular question. So, for example, a real risk of bias might be thought to arise in the event of a personal friendship or even animosity between the judge and any person involved in the case; or if the judge had, in a previous case, rejected the evidence of a person whose credibility is important to the issue under consideration; or if for any other reason there is a real ground for doubting the ability of the judge to ignore irrelevant considerations and bring an objective judgment to bear on the issues in the case. What is to be done if there is ground for doubt? I suspect the answer is the judge should recuse himself or herself. But these are matters to be considered and worked out in the context of the UPC. Similarly, the court may consider that if objections are to be taken to any particular judge or group of judges, then they should be taken at an early stage where they can be dealt with as part of the case management process. So too, if a judge is in any doubt about his or her position, it may be as well that this is disclosed as soon as possible. All of these are important questions and should, I suggest, be considered as part of the development of the culture and practice of the court.
2.6. Finally I think it is worth saying a word about activities outside court. This is an issue which is addressed in general terms in Article 7 of the Statute which requires judges to sign a declaration of undertaking to respect the obligations arising from their office. And Article 17 of the Agreement precludes full-time judges from engaging in other activities unless an exception has been granted by the Administrative Committee or they involve the exercise of other judicial functions at national level. Here again I see a need for further guidance. Let me give some illustrations. Generally, relationships with the media are of particular importance. Certainly it is understood in England that judges should refrain from answering public criticism of judgments or decisions, whether when sitting as judges or outside court. In 2003, Lord Woolf, as Lord Chief Justice, referred to "the very important convention that judges do not discuss individual cases". On the other hand, many aspects of the administration of justice and of the functioning of the judiciary are the subject of necessary and proper public consideration and debate. We may expect that this will be particularly so of the UPC. Appropriate judicial participation in any such debate may be desirable and contribute to the public understanding of the administration of justice and to public confidence in the UPC judiciary. These are matters which, I would suggest, the judges must be permitted to work out and develop for themselves as part of their new culture.
III. Case management
3.1. That brings me to my next main topic, case management, and I begin with some general principles and in doing so attempt to identify some of the issues which are likely to arise in the day to day running of this new court.
Some general points
3.2. Proportionality and active case management will lie at the heart of the UPC system. The court must deal with cases in ways which are proportionate to their importance and complexity and must ensure that the rules, procedures and remedies are used in a fair and equitable manner and do not distort competition (Agreement, Article 42). The court must actively manage the cases before it in accordance with the rules without impairing the freedom of the parties to determine the subject-matter of, and the supporting evidence for, their case (Article 43). All procedures in the written, interim and oral elements of the process are to be organised in a flexible and balanced manner (Article 52).
3.3. Here then we see a broad discretion conferred upon judges to manage cases actively with a view to trying to ensure that the oral hearing of issues of infringement and validity takes place within one year. What does all this mean, however? At the outset I think judges should work out together how best to achieve these objectives. In the systems with which I am familiar, active case management may include encouraging the parties to co-operate with each other in the conduct of the proceedings; identifying the issues at an early stage; deciding promptly which issues need full investigation and disposing summarily of others; deciding the order in which issues are to be resolved; encouraging the parties to use an alternative dispute resolution procedure if the court considers that it may be of assistance; helping the parties to settle the whole or part of the case; fixing timetables or otherwise controlling the progress of the case; considering whether the likely benefits of taking a particular step justify the cost; dealing with as many aspects of the case as it can on the same occasion; dealing with the case so far as possible without the parties needing to attend at court; and generally giving directions to ensure that the trial of a case proceeds quickly and efficiently. Of course, the aim is ultimately to ensure that justice is done at a reasonable cost. But often this is easier said than done and particular difficulties arise where one party has available to it resources considerably in excess of those available to the other. How, for example, is the proportionality test to be applied where a small business with limited resources seeks to challenge an extremely valuable patent held by a well-resourced respondent?
3.4. The phrase audi alteram partem embodies a cherished principle of natural justice familiar to most legal systems. But how little can the judge get away with? What about the hopeless case? Can the judge, having read the documents in a case, ask the legal representatives to address him on the footing that there is no answer to an aspect of the case of one side? These are difficult questions and it may well be that judges currently adopt different approaches to them.
3.5. Another issue which often arises is that of confidentiality. A party may be concerned that the judge should see and read a particular document but that it should not be disclosed to the other side for fear that its contents will be misused. What is the judge to do? Here again I suspect that the practice varies from jurisdiction to jurisdiction. In England the courts are very reluctant to consider any document or other evidence which cannot be disclosed to the other side but judges take steps to ensure that confidentiality is respected consistent with justice being done. The courts are therefore well used to developing what are, sometimes, quite sophisticated confidentiality regimes whereby, for example, a document may only be disclosed to named individuals on undertakings to the court that their contents will not be used for any purposes other than those of the litigation and that no copy may be made of any such document or of its contents.
3.6. Active case management can also bring its own problems. Judges may not infrequently try and encourage the parties to settle by expressing a view about the merits of the claim or at least particular issues comprised within it. Though admirable as an aim it may provoke the party adversely affected to claim that the judge is biased and has already made up his mind. How is such an application to be dealt with? The judge is familiar with the case and proportionality might point towards its rejection. Conversely, both parties are entitled to a fair hearing. What principle should be applied? Is it an appropriate test to ask whether all of the circumstances would lead a fair-minded and informed observer to conclude that there is a real possibility that the judge is biased? And how much of an explanation needs to be given to the parties in rejecting or acceding to such an application? These are difficult questions and again a common approach throughout the new UPC court would no doubt be welcome.
3.7. Let me mention some other issues. Article 45 of the Agreement provides that the proceedings are open to the public unless the court decides to make them confidential, to the extent necessary, in the interests of one of the parties or other affected persons or in the general interests of justice or public order. What principles are to be applied to applications that cases should be heard in private? Is it enough that it is something that both parties request or is there a general public interest in ensuring that the judicial process is open to the public? In this connection, what is to be permitted within the court room? May proceedings be recorded? May Twitter be used? May photographs be taken?
3.8. Another interesting question concerns the power of the court to recall, reconsider or alter an order before it is enforced. Sometimes a judge may realise that the decision has been made without regard to an important authority or statutory provision and that a plain mistake has been made. Conversely, such a jurisdiction should not be used to subvert the appeal by reopening contentious issues and allowing a new case to be advanced. In England judges generally send the judgment to the parties in draft before it is delivered, so that obvious errors can be identified and corrected. But again, this is not a vehicle to allow the parties to re-argue their cases.
3.9. A final general matter concerns enforcement of procedural orders. I note that Rule 355 provides that if a party fails to take a step within the time set by the rules or by the court, a decision may be given by default. But this rule plainly confers a discretion upon the court and it raises interesting questions as to when and how it is be exercised, and whether the defaulting party must be given an opportunity to provide an explanation for that default. For example, would it be reasonable for the court to make an order immediately after the default or should the defaulting party be given some notice that that is what the court will do by, for example, the court providing in the order that it is final and any default will lead to an adverse decision?
Some specific issues
3.10. That brings me to some critical issues upon which I anticipate that UPC judges will have a good deal to say. For the purposes of this paper I have identified just a few of them. When should a party be permitted to expedite his case? Sometimes both parties want it, sometimes only one or the other. What justifies jumping the queue?
3.11. I have no doubt that stays of proceedings will be a highly contentious issue. As I have indicated, the preamble to the rules indicates that actions should be brought to trial within one year. It may therefore be thought that stays are contrary to this basic principle and should be ordered only in exceptional cases. Here I anticipate the courts will have to grapple with the terms of Rule 118 which deals with the position where there are infringement proceedings before a Local or Regional Division and revocation proceedings are pending between the same parties before the Central Division or an opposition is pending before the EPO. In this context, what does a high likelihood that the relevant claims will be held to be invalid by the final decision in the revocation proceedings mean? And when might a decision of the EPO be expected to be given rapidly? One might think that this rule embodies the notion that a stay should be granted only rarely. Will this be the approach the UPC courts adopt?
3.12. This debate would not be complete without a consideration of the issue of bifurcation. This is permitted by Rule 37 and I would certainly urge the UPC judges to consider in good time the questions to which this is likely to give rise and how they might be answered. Defendants are naturally concerned at the possibility of what is known as the injunction gap, and particularly so given that validity proceedings transferred to the Central Division may lag behind infringement proceedings retained by a Local or Regional Division.
3.13. Saisie and disclosure are also matters of great importance and upon which the practices of participating member states have differed significantly. What principles are to be applied by the court in deciding whether or not to make an order under Rule 192 for the preservation of evidence? Certainly it appears to contemplate a procedure which has elements of both the French saisie and the English search and seize orders. Will some courts be tempted to make such orders routinely as a substitute for disclosure in the course of proceedings, or will it be an exceptional remedy?
3.14. I am concerned too at the circumstances in which courts may consider it appropriate to grant without notice (ex parte) injunctions. This is an extremely powerful remedy and may have a very serious impact upon a defendant's business, particularly if it is effective across a number of different countries. The Rules (205-212) contain a good deal of detail about the various matters which the court should take into account in deciding whether to grant such relief and, if so, upon what terms. But the court plainly has a wide discretion and, to avoid forum shopping, it is desirable that a consistent approach is adopted. Simply by way of example, in England judges will always ask whether a defendant has been given notice that such relief is being sought and, if not, why not. If no good reason is provided it is most unlikely that relief will be granted. So also, the possibility of security being given as a condition of the grant of provisional measures is contemplated by Rule 211 and, it may be thought, is something which should in general be required.
3.15. Many jurisdictions (and England is one of them) will not be familiar with the notion of a Judge Rapporteur. There can be little doubt that under the Rules the Judge Rapporteur will have a great deal of power to shape the course of the proceedings, particularly under Rule 104 by the permitting or refusing of disclosure, fact evidence, expert evidence and experiments. It may be thought desirable that a party accused of infringement should be required to provide either disclosure or a description of the product or process in issue sufficient to enable the issues of infringement to be determined. Fact evidence may be important where actual knowledge is an issue or where there is a dispute over the availability of prior art or whether a product or process has been prior-used. A commonality of approach in relation to expert evidence may also be considered desirable and it is well known that in England cross-examination directed to particular issues may prove extremely valuable. You may consider that consistency and predictability will be as important in this area as in others.
3.16. Finally I would mention the possibility of the use of evidence in other proceedings. It may be thought questionable whether or not evidence obtained under compulsion, whether under Rule 192 or otherwise, should be used in other proceedings, at least without good reason. These too are matters upon which I anticipate a good deal of debate.
4.1. The last area upon which I wish to say a few words is judgment writing. This is a sensitive topic because the writing of judgments is an individual exercise and as much an art as a science. There are some general points which I think may be made, however. It is always helpful to focus attention upon the real issues and to keep the judgment as brief and clear as the subject-matter allows. In England we are not always known for our short judgments and perhaps we would do well to keep these words of Blaise Pascal in mind:
"I have only made this letter longer (than usual) because I have not had the time to make it shorter."3
4.2. Except in short judgments, an early paragraph mapping out the course of the judgment and the use of headings are often useful. My personal view is that it is also helpful to consider to whom the judgment is addressed. The answer is, of course, the parties, particularly, the loser; the lawyers for the parties; the Court of Appeal; the law reporters; and finally the general public. What is, I think, vital is a clear identification of the issues, a plain and unambiguous decision on each of those issues and reasoning to justify each such decision. And at first instance, fact-finding on all disputed issues is critical.
4.3. An interesting question is whether judgments should be given ex tempore. Sometimes this is important, for example because the matter is very urgent. Even so, many judges find it helpful to have a structure for a judgment worked out by the time it is given. In England, a judge should listen to post-judgment corrections of fact, law or understanding. On the other hand, it is not permissible to allow the case to be re-argued. We are always provided with an opportunity to check the transcript and alter the contents, perhaps even quite substantially, for clarity; but plainly not to change the outcome.
5.1. There can be little doubt that the success of the UPC will depend in significant part on user perception. It is essential that the court is seen to offer consistent high-quality decision-making at affordable cost. In this paper I have posed a number of questions on matters of legitimate concern to potential users. No doubt there are many others. I think they illustrate the importance of the judges of this new court working together to develop consistent, reliable and transparent approaches to the exercise of the considerable powers and discretions which will be conferred upon them. It is an exciting opportunity to develop a system which is better than anything that has gone before.