Litigation exam 2

Question 1

The usual rule in civil litigation is that the _______ must pay the ______s costs (CPR 44.2(2)(a)). Costs are assessed by the court so that the ______ must only pay what the court considers to be _________
and ________. However, the court has a very wide discretion and can take into account all of the circumstances, including the _______ of the parties. The ________ of the parties includes their ______ before the claim was issued, the manner in which a party has pursued or contested the claim, and whether the claim was, in whole or in part, _________________.

Answer 1

The usual rule in civil litigation is that the loser must pay the winner’s costs (CPR 44.2(2)(a)). Costs are assessed by the court so that the loser must only pay what the court considers to be reasonable
and proportionate. However, the court has a very wide discretion and can take into account all of the circumstances, including the conduct of the parties. The conduct of the parties includes their
conduct before the claim was issued, the manner in which a party has pursued or contested the claim, and whether the claim was, in whole or in part, exaggerated.

Question 2

What is a wasted costs order?

Answer 2

Where the court considers that the unreasonable conduct of a party’s legal representative has led to unnecessary or wasted costs, the court may order the legal representative to meet those costs
personally (CPR 46.8).

Question 3

What is the overriding objective of the Civil Procedure Rules?

Answer 3

To enable the court to deal with cases justly and at a proportionate cost.

Question 4

Under IPREG 14.1 what must a regulated person not submit orally or in any document or pleading? (3)

Answer 4

1) statements of fact or contentions that are not supported by the evidence or instruction of the client;

2) contentions that he cannot justify as prima facie arguable; or

3) allegations of fraud unless clearly instructed to make such an allegation and it is prima facie supported by credible material (note, however, that this does not preclude the making of claims
of “bad faith” per se (for example, a lack of intention to use a trade mark), unless that claim is specifically directed to substantive fraud).

Question 5

What does D-B-C-L stand for?

Answer 5

Duty
Breach
Causation
Loss

For IP: Right - > Infringement

Question 6

What is the purpose of the Practice Direction on Pre-Action Conduct (PDPAC)?

Answer 6

To govern the pre-action conduct of parties in relation to an IP dispute.

Question 7

What does the Practice Direction on Pre-Action Conduct (PDPAC) hope to achieve?

Answer 7

Parties should try to settle issues without proceedings (ADR etc.) and minimize costs.

Question 8

What could be considered a first step for a claimant under the Practice Direction on Pre-Action Conduct (PDPAC)?

Answer 8

Writing to the defendant with a concise description of the details of the claim. The letter should include the basis on which the claim is made, a summary of the facts, what the claimant wants from the defendant, and if money, how the amount is calculated.

Question 9

What could be considered a second step under the Practice Direction on Pre-Action Conduct (PDPAC)?

Answer 9

The defendant responding within a reasonable time - 14 days in a straightforward case and no more than 3 months in a very complex one.

The reply should include confirmation as to whether the claim is accepted and, if it is not accepted, the reasons why, together with an
explanation as to which facts and parts of the claim are disputed and whether the defendant is making a counterclaim as well as providing details of any counterclaim

Question 10

What could be considered a third step under the Practice Direction on Pre-Action Conduct (PDPAC)?

Answer 10

The parties disclosing key documents relevant to the issues in dispute.

Question 11

What might a party’s silence in response to an invitation to participate in or a refusal to participate in ADR be considered by the court? What might be the consequences?

Answer 11

Unreasonable by the court and could lead to the court ordering that party to pay additional court costs.

Question 12

Does the court require strict compliance with the terms of the relevant pre-action protocol or PDAC?

Answer 12

The court will consider whether all parties have complied in substance with the terms of the relevant pre-action protocol or PDPAC, and is not likely to be concerned with minor or technical infringements, especially when the matter is urgent (for example an application for an injunction).

Question 13

What are possible penalties for non-compliance with the terms of the relevant pre-action protocol or PDAC? (4)

Answer 13

adverse case management directions;
costs sanctions;
deprivation of interest
and lower or enhanced interest.

Question 14

Pre-Action Disclosure - when may disclosure be ordered before proceedings have started? (2)

Answer 14

(1) where the applicant and respondent are both likely to be a party to subsequent proceedings, and
(2) the documents sought would fall within the scope of standard disclosure.

Question 15

When may Pre-Action Disclosure be ordered? (3)

Answer 15

(1) Where it is desirable in order to dispose fairly of the anticipated proceedings,

(2) assist the dispute to be resolved without proceedings, or

(3) save costs.

Question 16

Can documents being provided by one party to another under a protocol or the PDPAC be used for any purpose other than resolving the matter?

Answer 16

Not unless agreed in writing by the party

Question 17

What are the 4 Halsey Factors? (N-M-C-P)

Answer 17

1) the nature of the case
2) the merits of the case
3) the cost of mediating
4) the prospects of success at mediation

Question 18

The court is obliged to encourage Alternative Dispute Resolution (ADR), what can it do to proceedings if the parties enter into ADR?

Answer 18

It can stay them.

Question 19

What may the court do if a party unreasonably refuses to consider ADR?

Answer 19

Issue cost penalties

Question 20

Advantages of ADR include: commercial resolution/creative solutions, preservation of relationship, speed, cost, confidentiality. What are some others?

Answer 20

Lack of precedent value
Finality (no appeals)
Equivalent of day in court
Addresses hurt pride

Question 21

In IPEC, the small claims track is for claims up to _________. The small claims track of IPEC CANNOT deal with the following rights:
1.
2.
3.
4.

Answer 21

£10,000

Patents
Registered Design rights
Semiconductor
Plant varieties

Question 22

Can Judges in the small claims track of IPEC grant interim injunctions?

Answer 22

No, in the small claims track of IPEC only FINAL injunctions can be granted.

Question 23

Where will claims of £10,001 or more be allocated in IPEC (track)?

Answer 23

Multi Track.

Question 24

Does IPEC have a fast track or intermediate track?

Answer 24

No IPEC only has the small claims track (£10,000 or less) or the Multi Track (£10,001 or more).

Question 25

What is the general rule w.r.t costs in IPEC small claims?

Answer 25

Each party bears its own costs.

Question 26

What is the claim value for IPEC capped at?

Answer 26

£500,000 (excl. interest and costs)

Question 27

What are recoverable costs of IPEC capped at?

Answer 27

£60,000

Question 28

Why might an otherwise over £500,000 claim be pursued in IPEC instead of Patents Court?

Answer 28

Quick, final injunction needed quickly, defendant has no money to pay claim/costs (capped at £60,000).

Question 29

Which Courts can handle claims relating to Patents, Registered Designs, Semiconductor or Plant Varieties?

Answer 29

IPEC or the PATENT COURT

Question 30

Which Courts handle claims relating to TM, copyright, performance, unregistered design rights, other rights other than patents, reg designs, etc.?

Answer 30

IPEC (all tracks, note that the small claims track of IPEC cannot handled P, RD, ST or PV) or Chancery Division

Question 31

What are the only courts which can handle claims relating to Patents?

Answer 31

IPEC (NOT the small claims track) or the Patent Court

Question 32

What are the four key points of the test for standard disclosure?

Answer 32

Disclosure of documents: 1) upon which the party relies, 2) which are likely adversely to affect his own case; or another parties case; 3) support any other parties case 4) are, or were, within a parties control

Question 33

What does the 'control' aspect of the standard disclosure requirement mean?

Answer 33

“In his control”, means if the document is or was in the party’s physical possession; the party had or has the right possession of it; or the party has or has had a right to inspect it. In this context, right means a legal right to compel the third person to deliver up the document to the party, to inspect it or to take copies.

Question 34

W.r.t disclosure, what does a party have a right to inspect?

Answer 34

31.14: a party has right to inspect documents referred to in the statements of case or witness statements but not a document inferred to exist e.g. may inspect a document quoted in the statement of case. Must apply for specific disclosure.

Question 35

What are the consequences of a failure to disclose? (3)

Answer 35

1. Not able to rely on the disclosure 2. The test is prejudice to the other party - adverse cost 3. Legal representatives must write comprehensively to the client or suffer a wasted costs order (against the legal rep personally)

Question 36

What is a wasted costs order?

Answer 36

Order of the court, financial penalty on legal representative personally as a result of their conduct

Question 37

When is an order for specific disclosure made?

Answer 37

On the application of a party where it considers another party has failed to meet its disclosure obligations during the standard disclosure process.

Question 38

An order for specific disclosure is an order that a party must do one or more of what? (3)

Answer 38

1. disclosure documents or classes of documents specified in the order; 2. carry out a search to the extent stated in the order; 3. disclose any documents located as a result of that search.

Question 39

W.r.t to disclosure, why might IPEC be a preferred venue?

Answer 39

IPEC has ‘specific’ disclosure only – i.e. the court will specify the scope of disclosure in the case management order by reference to date range, issues, number of documents etc. (contrast with specific disclosure under 31.12)

Question 40

Restricted use - A party to whom a document has been disclosed may use the document only for the purpose of the proceedings in which it is disclosed, except where? (3)

Answer 40

a. the document has been read to or by the court, or referred to, at a hearing which has been held in public; b. the court gives permission; or c. the party who disclosed the document and the person to whom the document belongs agree. The court may make an order restricting or prohibiting the use of a document which has been disclosed, even where the document has been read to or by the court, or referred to, at a hearing which has been held in public.

Question 41

W.r.t electronic disclosure of documents, what must the search be?

Answer 41

Must be reasonable, proportionate, consider the number of documents involved; the complexity of case; ease of retrieval and location of data; cost; importance of the document; keyword searches may be insufficient; onus on applicant to show in a case where a document is not reasonably accessible that it is relevant and material.

Question 42

What may impact whether a search for documents is reasonable and proportionate?

Answer 42

Consider the number of documents involved; the complexity of case; ease of retrieval and location of data; cost; importance of the document; keyword searches may be insufficient; onus on applicant to show in a case where a document is not reasonably accessible that it is relevant and material.

Question 43

The IPEC costs scale does not apply where (2)

Answer 43

(a) the court considers that a party has behaved in a manner which amounts to an abuse of the court’s process; or (b) the claim concerns the infringement or revocation of a patent or registered design or registered trade mark the validity of which has been certified by a court or by the Comptroller-General of Patents, Designs and Trade Marks in earlier proceedings.

Question 44

In the IPEC Multi-Track, the court will not order a party to pay total costs of more than: (a) £________ on the final determination of a claim in relation to liability; and (b) £________ on an inquiry as to damages or account of profits.

Answer 44

In the IPEC Multi-Track, the court will not order a party to pay total costs of more than: (a) £60,000 on the final determination of a claim in relation to liability; and (b) £30,000 on an inquiry as to damages or account of profits.

Question 45

The maximum amount of scale costs that the court will award for each stage of the claim is set out in Practice Direction 46. The following may be recovered in addition to the amount of the scale costs set out in Practice Direction 46: (3)

Answer 45

(a) court fees; (b) costs relating to the enforcement of any court order; and (c) wasted costs.

Question 46

Who can make a CPR part 36 offer?

Answer 46

Claimant or defendant

Question 47

How should a CPR part 36 offer be made? (4)

Answer 47

a. Should be made in writing; b. Must state it is intended to be a Part 36 offer; c. Must make clear whether it relates to whole claim or only part of it. d. Must be open for at least 21 days.

Question 48

How long must a CPR part 36 offer be open for?

Answer 48

At least 21 days

Question 49

By making or accepting a Part 36 offer, a defendant agrees to pay what?

Answer 49

By making or accepting a Part 36 offer, a defendant agrees to pay the claimant’s costs of the proceedings to the date of acceptance. Its status is ‘without prejudice save as to costs’.

Question 50

In IPEC, where a claimant beats its own Part 36 offer, the cap on each stage of costs is likely to be raised by __%. The total amount of costs awarded is likely to become subject to a raised overall cap of £________. That remains subject to the discretion of the court.

Answer 50

In IPEC, where a claimant beats its own Part 36 offer the cap on each stage of costs is likely to be raised by 25%. The total amount of costs awarded is likely to become subject to a raised overall cap of £75,000. That remains subject to the discretion of the court.

Question 51

What determines if a document is privileged?

Answer 51

Its substance.

Question 52

What is the benefit of marking a document "without prejudice"?

Answer 52

A document attracting ‘without prejudice’ status cannot be produced to the court in any other circumstances. If a party wishes to show a document to the court on the question of conduct and costs once liability has been determined, it should be marked ‘without prejudice save as to costs’. Note that it will not be possible to infer this status from the content of the document, only that it is ‘without prejudice. It is therefore essential that a document is expressly marked with this wording if such status is sought.

Question 53

Without prejudice privilege attaches to what type of document?

Answer 53

Without prejudice privilege attaches to communications containing a genuine attempt at settlement or compromise. Marking a document ‘without prejudice’ is only indicative of the party’s intention, it is not conclusive. It is the substance of the document which will determine whether it is privileged

Question 54

When may a document be withheld from disclosure?

Answer 54

If it is privileged - it still must be listed but marked as privileged

Question 55

Legal Professional Privilege is divided into (1) legal advice privilege and (2) litigation privilege. Legal advice privilege attaches to communications which are what? (3)

Answer 55

1. Confidential 2. Between legal adviser and client; and 3. Created for the sole or dominant purpose of obtaining legal advice.

Question 56

What is legal advice?

Answer 56

Confidential communications between client and legal adviser made for the giving or receiving of legal advice; whether or not litigation is contemplated.

Question 57

Legal Professional Privilege is divided into (1) legal advice privilege and (2) litigation privilege. Litigation advice privilege attaches to communications which are what? (3)

Answer 57

1. Confidential; 2. Created in respect of existing litigation or litigation which is reasonably in prospect; and 3. Created for the sole or dominant purpose of obtaining legal advice or evidence in respect of such litigation, or to aid in its conduct.

Question 58

What is the three limb test for disclosure?

Answer 58

1. Rely upon 2. adverse to parties case or another 3. support another parties case Within CONTROL

Question 59

What does PDPAC summarise the objective of the pre-action regime as? (6)

Answer 59

(a) understand each other’s position; (b) make decisions about how to proceed; (c) try to settle the issues without proceedings; (d) consider a form of Alternative Dispute Resolution (ADR) to assist with settlement; (e) support the efficient management of those proceedings; and (f) reduce the costs of resolving the dispute.

Question 60

What claim value cases can be allocated to the Fast Track of the Patents Court?

Answer 60

£10,001 -> £25,000.

Question 61

How are costs handled in the Fast Track of the Patents Court?

Answer 61

Fixed recoverable costs.

Question 62

What claim value cases would the Intermediate Track of the Patents Court be suitable for?

Answer 62

£25,001 to £100,000

Question 63

How are costs handled in the Intermediate Track of the Patents Court?

Answer 63

Intermediate track cases are subject to Fixed Recoverable Costs, which will vary depending on which of 4 complexity bands the claim is assigned to.

Question 64

How long will a trial in the Fast Track of the Patents Court last?

Answer 64

up to 1 day.

Question 65

How long will a trial in the Intermediate Track of the Patents Court last?

Answer 65

no more than 3 days

Question 66

When would a case be allocated to the Multi Track of the Patents Court? (2)

Answer 66

1. Claim value is over £100,000 2. Claim value is below £100,000 BUT the case involves complex points of law and/or evidence.

Question 67

Why is IPEC cheaper to use? (4)

Answer 67

1. Costs capped at £60,000 2. Shortened procedure 3. Limited disclosure as ordered by Court 4. Trial is limited to 2-3 days

Question 68

What are the relevant factors for choosing IPEC? (7)

Answer 68

1. size of case and financial resources of the parties 2. Conduct of the case 3. value of claim and remedies required 4. Complexity and public importance of the claim 5. Case management orders required 6. Estimated length of trial (2-3 days ONLY) 7. Need for an early trial

Question 69

What categories of claims can be allocated to the small claims track in IPEC? Claims in respect of what?

Answer 69

NOT patents, reg designs, semiconductor, plant varieties. The value of claim is less than £10,001. The particulars of claim state the claimant wishes small claims track. The defendant does not object to using small claims track.

Question 70

How do IPEC and Patents Court differ with respect to disclosure?

Answer 70

IPEC has 'specific' disclosure only, the Court will specify what disclosure take place.

Question 71

How is disclosure handled in the Patents Court?

Answer 71

Initial disclosure: provided with statements of case, comprising the key documents. Extended disclosure: only if requested by a party at the CMC. If permitted, controlled by the court.

Question 72

When can Patent Attorneys claim litigation privilege?

Answer 72

When members of CIPA with rights to conduct litigation

Question 73

When does "without prejudice" privilege fall away?

Answer 73

Its privileged status falls away once a settlement has been reached, at which point documents can be produced to evidence the terms of the settlement. A document attracting ‘without prejudice’ status cannot be produced to the court in any other circumstances.

Question 74

If a claimant beats its own Part 36 offer at trial, what amount in additional damages is it entitled to? How is this calculated?

Answer 74

up to £75,000, calculated by 10% of the first £500,000 plus 5% of any damages above that figure

Question 75

If a claimant fails to beat a defendants Part 36 offer at trial, what is the defendant entitled to?

Answer 75

Costs (including any recoverable pre-action costs) from the date on which the period of the offer expired; and Interest on those costs (8%?)

Question 76

What happens if a claimant at IPEC beats its own Part 36 offer in light of the costs cap in IPEC of £60,000?

Answer 76

In IPEC, where a claimant beats its own Part 36 offer the cap on each stage of costs is likely to be raised by 25%. The total amount of costs awarded is likely to become subject to a raised overall cap of £75,000. That remains subject to the discretion of the court. The IPEC stage and overall costs caps should remain in place where the defendant has made a successful Part 36 offer. Removing the caps where there was such an offer would tilt the balance of advantage unfairly in favour of defendants.

Question 77

Where can patent etc. cases NOT be held?

Answer 77

Small claims court of IPEC - which makes sense, in what world is a patent dispute worth £10,000 or less?